Obtaining a confirmatory signature from an inventor / former employee can be hard

Case No. S2014_007 ¦ Decision of 30 October 2014 ¦ “Mitwirkungspflicht des Arbeitnehmers bei Patentanmeldungen (Arbeitnehmerpflicht)”

Note that Hepp Wenger Ryffel AG is involved in this case on behalf of the plaintiff.

— THE DECISION IN A NUTSHELL —

If the actual rights in the invention of a former employee reside with the former employer, it is an element of the former employee’s duty and care under Art. 321a CPC to sign documents that are necessary to secure the rights of his former employer. In summary proceedings (as a remedy in clear cases), the FPC ordered an unwilling former employee to execute an assignment document (actually, an assignment confirmation) required for proceedings before the USPTO.

— THE DECISION IN MORE DETAIL —

sign-hereThe present matter pertains to US patent application No. 13/994,494, published as US 2014/0196608 A1.

It was undisputed that the defendant had been an employee of the plaintiff and that he had been involved in the development of the invention for which protection is sought for with the aforementioned patent application. Moreover, the defendant did not claim any rights in this invention, but rather acknowledged that the respective rights to this invention reside with the plaintiff. The actual course of correspondence between the parties prior to the proceedings was also beyond dispute.

Nevertheless, the former employee had refused to sign the necessary assignment form (and the declaration) to be filed with the USPTO; see the excerpt from the public file wrapper that is available via the PublicPair service of he USPTO. He argued that this could result in his exposure to being sued in the US by a potential third party. Towards this end, the plaintiff provided a hold harmless declaration:

Gerne können wir Ihnen hiermit eine rechtsverbindliche Erklärung abgeben, dass die Delica AG Sie für einen — allfällig eintretenden — Schaden, der sich wider Erwarten aufgrund von Ansprüchen Dritter im Zusammenhang mit der Unterzeichnung der beiden für das US Patent and Trademark Office bestimmten Dokumente und der Eintragung des Patents in den USA ergeben könnte, selbstverständlich vollumfänglich schadlos halten wird.

In addition, the defendant had been offered a reimbursement for his legal expenses, since he had seeked legal advise in the present matter. The defendant alleged to have had expenses of CHF 123’000,–, and he issued an invoice on this sum to the plaintiff. This was obviously not the order of magnitude the plaintiff had in mind when a reimbursement of expenses was offered.

Furthermore, the defendant suggested a kind of trade-off: He would sign the requested documents for the (utility) patent application at stake, if the plaintiff in turn would withdraw the design patent application US D689,768 S, or designate him as inventor. According to the defendant, he had been involved in the generation of the respective design, too. This was rebutted by the plaintiff.

During the proceedings, the defendant alleged that his linguistic proficiency in English was not sufficient to understand the documents that he was expected to sign. The FPC held that this was implausible for various reasons: i) in view of the defendant’s curriculum vitae; ii) since even a moderate understanding of the English language would be sufficient; and iii) in view of the fact that he was advised by a patent attorney of English mother tongue (Da Vinci Partners).

The FPC emphasised that with due execution of the assignment the defendant would actually not acknowledge anything more than what he had already confirmed beforehand, i.e. that all rights in the invention reside with the plaintiff:

I agree to sign all papers necessary to secure all said patents and rights, and request issuance of all such patents to said Delica AG.

In sum, the FPC held that the relevant facts were undisputed and the legal situation was clear (Art. 257 CPC). The defendant was thus ordered to provide the plaintiff with the executed assignment document within a short time limit of only 10 days, under the threat of a criminal penalty for non-compliance (Art. 292 CC).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_007 ¦ Decision of 30 October 2014 ¦ “Mitwirkungspflicht des Arbeitnehmers bei Patentanmeldungen (Arbeitnehmerpflicht)”

Delica AG ./. Cristian Popescu

Subject(s):

  • Breach of Contract
  • Denial of a written confirmation (remedy in clear cases)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. iur. Daniel KRAUS (Judge)
  • Dr. Herbert LAEDERACH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

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This milk frother won’t leave you cold

Case No. S2014_006 ¦ Decision of 06 October 2014 ¦ “Kaltmilchschäumer: Gutheissung vorsorglicher Massnahmen (Patentverletzung); Anforderungen Glaubhaftmachung offenkundige Vorbenutzung; Anforderungen Sicherheitsleistung”

— IN A NUTSHELL —

A prior use as prima facie evidence in a plea of nullity is frequently cumbersome — and was unsuccessful here. The prior use had allegedly occured already more than 10 years ago. The defendant did not provide a binding cease and desist declaration; preliminary injunctive relief was granted. It was not even made conditional on the payment of a security by the plaintiff since the defendant had repeatedly argued that the allegedly infringing machines were no longer marketed anyhow. Thus, the FPC did not anticipate that the measures may cause loss or damage to the defendant (Art. 264 CPC).

— IN MORE DETAIL —

Milk frothers are frequently litigated in Switzerland. You might perhaps recall the decisions Milchschäumer and Milchschäumer II a few years ago. The present case is apparently not related to the old ones, but again pertains to a milk frother. Fortunately, catchwords are not confusingly similar: This time, it’s a milk frother for cold milk (Kaltmilchschäumer).

i) BACKGROUND OF THE CASE

Latte macchiato, with milk froth toppingOne of the plaintiffs is the patentee of both patents in suit, i.e. a Swiss patent and a European patent. The other plaintiff is a member of the same group of companies. However, the parties are anonymized in the decision.

Nevertheless, from the wording of the requests and the technical details given in the decision, it is evident that CH 707 091 B1 and EP 2 120 656 B1 are the patents in suit. The patentee is Steiner AG Weggis. A connected undertaking of Steiner AG Weggis is Thermoplan AG — quite likely the second plaintiff. Never heard? Thermoplan manufactures the machines that Bloomberg recently referred to as Starbucks’ secret weapon.

Opposition/appeal proceedings are currently pending against EP 2 120 656 B1. The online file wrapper at the EPO is insightful: Franke Coffee Systems GmbH of Germany intervened as a party (under Art. 105 EPC), since proceedings for infringement of that patent had been instituted against them. In the intervention, it is referred to two summary proceedings at the regional court of Düsseldorf (Germany), i.e. 4a O 52/14 and 4a O 81/14 (the fulltext of the intervention is available here). No further details on these proceedings are available to date, but the present decision of the FPC also refers to two “corresponding decisions in summary proceedings” at the regional court of Düsseldorf on the German part the patent in suit. There are some further hints in the decision; in sum, it is abundantly clear to me that Franke Coffee Systems is involved as the defendant (i.e. the Swiss member of the Franke group of companies, Franke Kaffeemaschinen AG).

The European patent was maintained in slightly amended form by an Opposition Division (OD) of the EPO; see the Druckexemplar of the interlocutory decision of the OD. Appeal proceedings are still pending. The independent claims as maintained by the OD read as follows (markup vis-à-vis EP 2 120 656 B1 as granted:

1. A method for the production of milk foam or milk-based drinks, wherein milk is sucked with a pump (1) out of a container (3, 3′) and conveyed to an outlet (11′), air or a gas being added to the milk, whereby the milk/air mixture is processed in a cold or hot state into milk foam and conveyed as cold or hot milk foam to the outlet (11′), characterised in that
the milk or the milk/air mixture, which is sucked by the pump (1) und mixed with the air respectively the gas, is selectively conveyed via a throttle point (12) directly or via a flow heater (16) to the outlet (11′).

2. An apparatus for implementing the method according to claim 1, having a pump (1) sucking the milk from a container (3, 3′) via a suction line (2), having an outlet line (10) leading from the pump (1) to an outlet (11′), having an air supply line (5) opening out into the suction line (2), characterised in that the outlet line (10) has two parallel sections (10a, 10b), which can be enabled selectively by means of a valve (15) between the throttle point (12) and the outlet (11′), a flow heater (16) being assigned to one of these outlet line sections.

ii) WORDING OF THE REQUESTS

The proper wording of requests for injunctive relief is a matter of ongoing discussion amongst practitioners. Swiss case law strictly follows the rule that a request must be precise enough to allow enforcement of the prohibition by mere factual inspection; see e.g. this Blog here (with further reference). The present request for preliminary injunctive relief is quite lengthy. But it is a good example of a request that makes use of photographic illustrations of the infringing features to meet this goal (in German language, but you will get the idea):

Request for preliminary injunctive relief, with photographic illustration of features

Moreover, the request did not reach beyond the scope of the patents. Consequently, the FPC held that the wording of the requests was formally allowable.

iii) CLAIM CONSTRUCTION

Construction of the term “throttle point (12)” was under dispute. Clearly, this throttle point converts the milk/air mixture to a milk foam. In a function-oriented construction of the term, the FPC first clarified the terms “milk/air mixture” and “milk foam”. There is neither a precise definition in the patents nor have the parties provided any commonly accepted definition. A Ph.D. thesis of Katja BORCHERDING was not held sufficient since it only relied on a single reference for an amount of 0.5-0.97 vol.% of air in a milk foam. The term “milk/air mixture” was thus construed very broadly as “any mixture of air and milk”, thus also encompassing “milk foam”.

As to the contribution of the throttle point, the FPC held that this is any kind of bottleneck that at least contributes to the formation of a milk foam.

iv) ALLEGEDLY INFRINGING EMBODIMENT NO LONGER IN USE, PRELIMINARY INJUNCTION ISSUED ANYHOW: HOW COMES?

The defendant argued that the allegedly infringing machine had only been produced and sold from January 2013 to February 2014. It had then been replaced by a new machine with a different (allegedly non-infringing) milk frother. However, the defendant did not provide any arguments as to why the contested embodiment would not infringe the patents in suit. The FPC considered the legitimate interest of the plaintiff ex officio (Art. 59 CPC). A danger of repetition of the alleged and undisputed infrigement remained since the defendant did not declare to cease and desist; cf. BGE 124 III 72, r. 2a and BGE 128 III 96, r. 2e. Moreover, validity of the patents was still disputed, and even the allegedly non-infringing machine was illustrated with a diagram that still carried the name of the contested device. In sum, the FPC held that the legitimate interest in preliminary injunctive relief still remained.

A threat of a not easily reparable harm was acknowledged for the reason alone that it would be difficult for the plaintiff to later on prove the causality of the harm to have occured from the infringement. Urgency of the matter was not compromised by the fact that the plaintiff had awaited the outcome of the decision of the OD of the EPO; this was rather appreciated as prudent by the FPC.

v) PRIOR USE: REQUIREMENT OF PRIMA FACIE EVIDENCE

The defendant argued for nullity of the patents in suit. Besides some further prior art documents (see below), nullity was argued in view of a prior use “Esprè Magic”. This prior use had been documented in corresponding opposition proceedings before the EPO with the following documents:

  • B3 (invoice)
  • B4 (flyer)
  • B5 (technical assessment by patent attorney Philipp RÜFENACHT)
  • B6 (list of exhibitors)
  • B7 (exhibition flyer)

Note that the prior use had occured already more than ten years ago. Two affidavits in support of the prior use and the technical details thereof were put on file by the defendant when the plaintiff had disputed the public availability and the relevant technical details of “Esprè Magic”. These affidavits were not supported with further documentary material. Moreover, the affidavits were not free from inconsistencies. Thus, the FPC was reluctant in considering these declarations. Apparently, the Regional Court of Düsseldorf came to the same conclusion in parallel proceedings in Germany. Moreover, it was not only that the FPC had doubts as to whether a prior use had actually occured or not. Even the technical details of the alleged prior use were held to be not sufficiently clarified by prima facie evidence to be considered novelty-destroying for the patents in suit.

vi) FURTHER PRIOR ART DOCUMENTS

Novelty of claim 1 of CH 707 091 B1 over R4 (i.e. EP 0 485 350 A1) was disputed. The decision highlights two decisive issues: First, the term “throttle point (12)” was construed very broadly (cf. above), and thus the bottleneck in conduit 6 of R4 was identified as to fulfil this feature. Second, it was required that the milk foam be conveyed to the outlet in a cold state. R4 discloses that the conduits 3 and 6 can be held at room temperature, thus with inoperative heating elements 10. Accordingly, the FPC held that a prima facie lack of novelty of claim 1 of CH 707 091 B1 was given.

To the contrary, it was held that no prima facie case of lack of novelty or inventive step of claims 1 and 2 of EP 2 120 656 B1 had been established. The FPC essentially followed the reasoning of the OD of the EPO in consideration of R4 and R6 (i.e. US 6,192,785 B1).

vii) SECURITY

The FPC could have made the interim measure conditional on the payment of security by the plaintiff, but (only) if it had been anticipated that the measures may cause loss or damage to the defendant (Art. 264 CPC). The defendant requested a security of CHF 2’000’000,–, but the FPC stressed that the defendant had repeatedly argued that the allegedly infringing machines are no longer marketed anyhow. Therefore, one would not anticipate that the preliminary injunction could cause loss or damage to the defendant.

viii) WHAT’S UP ON THE MARKET

The allegedly infringing machines are not identified in the decision. But in the meantime it has become a rubber-stamping excercise for me to dig a bit deeper into what is actually happening on the market. I have learned from followers of this blog that this is highly appreciated. So, these are the snippets of information that I could gather from the internet:

The world premiere of the Franke FoamMaster™ FM800 (flyer dated 12/12; CH and DE) was in early 2013 in Switzerland (see gourmet 4/13). Consequently, this machine was also promoted on the Franke website back in 2013 as the new premium device:

Franke Website (CH): Screenshot of July 30, 2014
Franke Website (CH): Screenshot of July 30, 2013

However, the FM800 is no longer promoted on the Franke Website for Switzerland (see screenshot of August 13, 2014 below). The same holds true for the Website for Germany. No signs of the FM800 machine anymore. Seemingly, the FM800 has been replaced by a machine FM750 (flyer dated 07/14; CH):

Franke Website (CH): Screenshot of August 12, 2014
Franke Website (CH): Screenshot of August 13, 2014

Thus, the FM800 would perfectly match the bibliographic criteria of the allegedly infringing machine at stake in the present decision. I have found a detailed technical booklet on the FM800 machine on the internet, with a water flow diagram (Wasserlaufschema) on p. 320:

water flow diagram

This illustration looks strikingly similar to the one reproduced on p. 6 of the decision, but details are scarcely visible in the decision. Pump P100 and restrictor BL0.8 are referred to in the decision, and are also visible on the right side of the above water flow diagram. In my personal opinion, all these are strong technical indications towards the FM800 machine.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_006 ¦ Decision of 06 October 2014 ¦ “Kaltmilchschäumer: Gutheissung vorsorglicher Massnahmen (Patentverletzung); Anforderungen Glaubhaftmachung offenkundige Vorbenutzung; Anforderungen Sicherheitsleistung”

(not identified) ./. (not identified)

Subject(s):

  • Patent infringement
  • Preliminary measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Dr. Herbert LAEDERACH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (First Court Clerk)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Lorenza FERRARI HOFER (Pestalozzi)
  • Dr. Michael REINLE (Pestalozzi)
  • Dr. Philipp RÜFENACHT (Keller), assisting in patent matters

— FULL TEXT OF THE DECISION —

Download (PDF, 309KB)

Precautionary taking of evidence: Forensic expert opinion established

Case No. S2013_007 ¦ Decision of 20 June 2014 ¦ “Vorsorgliche Massnahme / Vorsorgliche Beweisführung (Gutachten) gutgeheissen”

— IN A NUTSHELL —

The parties were in dispute about the right to an invention. The plaintiff had presented the invention to the defendant, but the defendant alleged that he had already been in possession of this invention beforehand. Certain documents of the defendant with handwritten elements were key. The plaintiff presumed that the defendant had manipulated these documents and requested precautionary taking of evidence, i.e. that a forensic expert opinion be established. The defendant collaborated, provided the documents without even having been orderd to do so. A forensic expert opinion was established accordingly.

— IN MORE DETAIL —

According to the Swiss Code of Obligations (Art. 332E), inventions produced by an employee  in the course of his work for the employer and in performance of his contractual obligations belong to the employer, whether or not they may be protected. The plaintiff alleged that he had presented one of his employee’s invention to the defendant, and that the defendant had subsequently applied for a Swiss patent application and a utility model in Germany, in his own name. The defendant alleged that he had been in possession of the invention before it had been presented to him by the plaintiff. In this respect, the defendant referred to technical documents with handwritten annotations in support of his allegation. The plaintiff however presumed that the documents had been manipulated.

In order to substantiate his suspicion, the plaintiff had requested precautionary taking of evidence (Art. 158(1) lit. b CPC), namely that a forensic expert opinion of the documents at stake be obtained. Moreover, the plaintiff  had requested that the defendant be obliged to not allow the Swiss patent application and the German utility model to lapse, without prior hearing of the defendant. The FPC did not follow the latter request but rather invited the defendant to provide his statement of defence. With his statement of defence, the defendant did not object to a forensic expert opinion being obtained. Suprisingly, the defendant even provided the respective documents without having yet been ordered to do so.

Consequently, the FPC obliged the plaintiff to provide a security of CHF 5000,– for the expert opinion, and on 02 September 2014 the opinion was requested from the Forensic Institute Zurich. Only about five months later, the defendant was ordered to not allow the Swiss patent application and the German utility model to lapse. Shortly thereafter, the parties were provided with the forensic expert opinion in early April 2014. Precautionary taking of evidence was thus concluded and proceedings were dismissed accordingly. The FPC set a deadline of 24 July 2014 for the plaintiff to file the main action, subject to the ordered measure (with respect to the Swiss patent application and the German utility model, see above) becoming automatically ineffective in the event of default; Art. 263 CPC.

Based on a value in dispute of CHF 100’000,–, court fees were set to CHF 5’000,–. The final costs for the forensic expert opinion were CHF 4’980,–.

Apparently, the defendant had not been professionally represented in these proceedings. Party costs do only include reasonable compensation for personal efforts in “justified cases”; Art. 95(3) lit. c CPC. This was not held to be the case here, since neither a loss of wages nor a highly complicated case or a very high value in dispute had been at stake. No party compensation was thus awarded to the defendant.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2013_007 ¦ Decision of 20 June 2014 ¦ “Vorsorgliche Massnahme / Vorsorgliche Beweisführung (Gutachten) gutgeheissen”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence
  • Interim measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

  • Dr. Hanspeter GEISSMANN (Geissmann)
  • Dr. Peter STEINEGGER (SBMP)

Representative(s) of Defendant:

  • (none)

— FULL TEXT OF THE DECISION —

Download (PDF, 81KB)

Yet another request for preliminary injunctive relief based on AZ’s EP 1 020 461 (Esomeprazole with e.e. of ≥ 99.8%)

Case No. S2013_003 ¦ Decision of 12 May 2014 ¦ “Vorsorgliche Massnahme, Gegenstandslosigkeit, Abweisung”

Hepp Wenger Ryffel AG is involved in this case on behalf of the defendant. Thus, no detailed comments on the merits will be made here.

— THE DECISION IN A NUTSHELL —

The defendant had changed his product to a lower enantiomeric excess (e.e.), to get out of the scope of the patent. The product change was documented by an analysis report. In addition, the defendant submitted an unreserved declaration to cease and desist from marketing the former product (with the higher e.e.). Consequently, the request for preliminary injunctive relief had become groundless and was dismissed. Likewise, a callback of the former product was not ordered since the product had already been changed about a year ago. Nevertheless, the majority of the costs was imposed on the defendant, based on a prediction of the potential outcome on the merits. By prima facie evidence, the FPC was convinced that the patent was valid.

— THE DECISION IN MORE DETAIL —

The case pertains to the (S)-enantiomer of omeprazole; see structural formula below. For some general background information on omeprazole, please see an earlier post on a specific hydrate of (S)-omeprazole here.

Esomeprazole
(S)-omeprazole, so-called esomeprazole

The patent in suit is EP 1 020 461 of AstraZeneca, directed to the magnesium (Mg) salt of the (S)-enantiomer of omeprazole with an an optical purity of ≥ 99.8% enantiomeric excess (e.e.). The patent has lapsed in the meantime, on 27 May 2014. (Note that an SPC for yet another five years has been granted; however, not for Mg-esomeprazole as such, but rather only for a combination of naproxen and Mg-esomeprazole, marketed by AstraZeneca under the tradename Vimovo®. Such a combination was not at stake here.)

An opposition division had decided to revoke the patent-in-suit in 2011 (see the decision of the OD here), but a BoA set this decision aside in November 2012 and ordered to maintain the patent with only a minor amendment, according to the first auxiliary request (AR1); see the decision T1760/11 of the BoA 3.3.01. Only the appropriate adaptation of the decription in order to bring it in line with the amended claim is currently still outstanding. A petition for review of the Enlarged Board of Appeal has not been successful. Note that such a petition for review has no suspensive effect, anyhow (Art. 112a(3) EPC). For any further information on the patent-in-suit, please see the European Patent Register and the file wrapper at the EPO.

Products of the defendant had been seized at the customs on 13 November 2013, and the patent-in-suit was maintained by the BoA a few days later. In due consideration of the decision of the BoA, the defendant had changed his product to a lower enantiomeric excess (e.e.) of only 99.64%, to get out of the scope. The lower e.e. was documented by an analysis report. Since 01 March 2013 only these modified products had been imported to Switzerland and were put on the market as of 15 April 2013. When the defendant got aware of the present proceedings on 29 April 2013, sales of products imported before 01 March 2013 were immediately stopped on 02 May 2013. Moreover, the defendant provided an ureserved declaration to cease and desist from marketing the former product (with a higher e.e. of ≥ 99.8%). Thus, the FPC held that no risk of recurrent infringement remained and the request for preliminary injunctive relief was dismissed as groundless.

Likewise, in view of prima facie evidence on file that the product had been changed already more than a year ago, the request for a callback of the former product was dismissed. Such a callback would not have been conducive anymore and was thus held disproportional.

Costs were allocated at the discretion of the court (Art. 107(1) lit. e CPC), based on a prediction of the potential outcome on the merits with respect to the former product. As already outlined in an earlier post concerning the decision S2013_004 of same day issued by the same board of judges, the FPC was convinced by prima facie evidence that the patent as maintained was valid. The reporting judge essentially relied on the reasoning of T1760/11. In that decision, the BoA held that D1 (DE-A-40 35455) was not a realistic closest prior art; it was considered structurally close, but not functionally close. D2 (EP-A-0 124 495) was held to be a more realistic closest prior art. Anyhow, the reporting judge assessed the involvement of an inventive step according to the problem-and-solution approach starting from both D1 and D2 and concluded that the claimed subject-matter of the patent-in-suit was not obvious over both D1 and D2.

Interestingly, the decision also briefly touches the question whether an e.e. of 99.64% might constitute an infringement under the doctrine of equivalents. This was answered in the negative, beyond doubt (p. 12, first and second para. of the decision):

Daraus ergibt sich ein e.e.-Wert von 99.64%, das heisst ein Wert, der vom Massnahmepatent nicht umfasst wird. […] Der Vollständigkeit halber ist jedoch festzuhalten, dass das Merkmal der optischen Reinheit von 99.8% Enantiomerenüberschuss (e.e.) ein wesentliches technisches Merkmal ist, welches das Massnahmepatent von dem widerrufenen Stammpatent […] abgrenzt. Damit besteht kein Raum für eine Ausdehnung des Schutzbereichs der Ansprüche des Massnahmepatents auf Äquivalente mit geringerer optischer Reinheit.

Inofficially translated into English language:

This results in an e.e. value of 99.64%, i.e. a value that is not covered by the patent-in-suit. […] For the sake of completeness, it is to be noted that the feature of the optical purity of 99.8% enantiomeric excess (e.e.) is an essential feature that differentiates the patent-in-suit from the parent patent […] which had been revoked. Thus, there is no room for any extension of the scope of the claims of the patent-in-suit towards equivalents with reduced optical purity.

The parent patent is EP 0 652 872 B1, revoked by a BoA with decision T401/04. It will be interesting to see if / how the FPC is going to apply / further elaborate such a reasoning in the future.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2013_003 ¦ Decision of 12 May 2014 ¦ “Vorsorgliche Massnahme, Gegenstandslosigkeit, Abweisung”

(not identified) ./. (not identified)

Subject(s):

  • Infringement
  • Preliminary injunction

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Prisca von BALLMOS (Reporting judge)
  • Emmanuel JELSCH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Simon HOLZER (MLL)

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

Download (PDF, 185KB)

Preliminary injunction issued based on AZ’s EP 1 020 461 (Esomeprazole with e.e. of ≥ 99.8%)

Case No. S2013_004 ¦ Decision of 12 May 2014 ¦ “Vorsorgliche Massnahme, Gutheissung”

Hepp Wenger Ryffel AG / Andreas WELCH is involved in the parallel case S2013_003, pertaining to the same patent-in-suit. Thus, no detailed comments on the merits will be made here.

— THE DECISION IN A NUTSHELL —

The defendant had apparently changed his product to a lower enantiomeric excess (e.e.), to get out of the scope of the patent. However, no declaration to cease and desist from marketing the former product (with the higher e.e.) was provided. By prima facie evidence, the FPC was convinced that the patent was valid. Consequently, preliminary injunctive relief was granted, and the defendant was obliged to arrange for a callback of the former product.

— THE DECISION IN MORE DETAIL —

The case pertains to the (S)-enantiomer of omeprazole; see structural formula below. For some general background information on omeprazole, please see an earlier post on a specific hydrate of (S)-omeprazole here.

Esomeprazole
(S)-omeprazole, so-called esomeprazole

The patent in suit is EP 1 020 461 of AstraZeneca, directed to the magnesium (Mg) salt of the (S)-enantiomer of omeprazole with an an optical purity of ≥ 99.8% enantiomeric excess (e.e.). The patent lapses 27 May 2014. (Note that an SPC for yet another five years has been granted; however, not for Mg-esomeprazole as such, but rather only for a combination of naproxen and Mg-esomeprazole, marketed by AstraZeneca under the tradename Vimovo®. Such a combination was apparently not at stake here.)

An opposition division had decided to revoke the patent-in-suit in 2011 (see the decision of the OD here), but a BoA set this decision aside in November 2012 and ordered to maintain the patent with only a minor amendment, according to the first auxiliary request (AR1); see the decision T1760/11 of the BoA 3.3.01. Only the appropriate adaptation of the decription in order to bring it in line with the amended claim is currently still outstanding. A petition for review of the Enlarged Board of Appeal has not been successful. Note that such a petition for review has no suspensive effect, anyhow (Art. 112a(3) EPC). For any further information on the patent-in-suit, please see the European Patent Register and the file wrapper at the EPO.

In due consideration of the decision of the BoA, the defendant had apparently changed his product to a lower enantiomeric excess (e.e.) of only 99.6 to 99.74%, to get out of the scope. However, the defendant neither provided a declaration to cease and desist from marketing the former product (with a higher e.e. of admittedly almost 100% ), nor was an analysis report of the currently marketed product submitted. Thus, the FPC held that a risk of recurrent infringement remained. Moreover, validity of the patent-in-suit was still disputed. However, the FPC was convinced by prima facie evidence that the patent as maintained was valid. The reporting judge essentially relied on the reasoning of T1760/11. In that decision, the BoA held that D1 (DE-A-40 35455) was not a realistic closest prior art; it was considered structurally close, but not functionally close. D2 (EP-A-0 124 495) was held to be a more realistic closest prior art. Anyhow, the reporting judge assessed the involvement of an inventive step according to the problem-and-solution approach starting from both D1 and D2 and concluded that the claimed subject-matter of the patent-in-suit was not obvious over both D1 and D2. Consequently, preliminary injunctive relief was granted.

With respect to the callback, the defendant argued that all former products would have an expiration date of November or December 2013. Thus, any callback would not only be meaningless but rather constitute black-marketing. However, in view of the still remaining risk of recurrent infringment (see above), the defendant was also obliged to arrange for a callback of the former product.

The plaintiff was ordered to initiate ordinary proceedings by 12 June 2014.

Reported by Martin WILMING

— BIBLIOGRAPHY—

Case No. S2013_004 ¦ Decision of 12 May 2014 ¦ “Vorsorgliche Massnahme, Gutheissung”

(not identified) ./. (not identified)

Subject(s):

  • Infringement
  • Preliminary injunction

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Prisca von BALLMOS (Reporting judge)
  • Emmanuel JELSCH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Simon HOLZER (MLL)

Representative(s) of Defendant:

  • Dr. Robert BRINER (CMS)
  • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

— FULL TEXT OF THE DECISION —

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Recovery of profits based on estimation

Case No. O2013_007 ¦ Decision of 19 March 2014 ¦ “Quantitativer Schadenersatz”

— THE DECISION IN A NUTSHELL —

The defendant had not complied with a prior order of the FPC to provide information on sales figures and accounting. Complete silence. An easy walk-over for the plaintiff: Defendant’s profits were recovered based on estimation. Non-compliance with the prior order will be prosecuted by the criminal judge.

— THE DECISION IN MORE DETAIL —

The patent in suit is EP 1 393 417 B1. The plaintiff had requested injunctive relief in first place, and further information and accounting in an action by stages for the recovery of profits of the defendant originating from illegitimate sales of infringing products. As discussed in detail in an ealier post on this matter, the defendant neither challenged the validity of the patent nor was the infringement disputed. He did not make representations of any kind. The FPC thus had accepted the claim for injunctive relief and the defendant was obliged to provide the requested information and accounting within 60 days after the decision had become final.

Now, guess what happened: The defendant did not respond. It was thus up to the plaintiff again to reasonably quantify his request for recovery of profits.

Art. 73 PatA stipulates that any person who performs an act of infringement either wilfully or through negligence shall be required to pay damages to the injured party according to the provisions of the Code of Obligations (CO). That means that (i) a loss or damage must have occured; (ii) the act must have been unlawful; (iii) it must have been a fault of the defendant; and (iv) causality of the unlawful act and the loss or damage must be established. But the plaintiff had requested recovery of profits of the defendant. This is a special case of business conducted in an agent’s interest, based on Art. 423(1) CO: Where agency activities were not carried out with the best interests of the principal in mind, he is nonetheless entitled to appropriate any resulting benefits.

In fact, the plaintiff had an easy walk-over: It was undisputed that the defendant had realised profit with the (undisputedly) infringing goods. Recovery of profits requires bad faith of the agent (BGE 126 III 69, r. 2a; 129 III 422, r. 4), but this was easily established here since the defendant had evidently imported the infringing goods from Taiwan without having clarified patent issues. Since the defendant did not comply with the order of accounting, the profits were estimated by the court at its discretion, essentially based on the representations of the plaintiff. The sales price of an infringing good was CHF 14,90. It was plausible that a reasonable purchase price of the defendant was USD 3,– per item, resulting in profits of approx. CHF 12,16 per item. Even though the plaintiff argued that 3’000 pieces had been purchased by the defendant, he apparently assumed that only 1’500 items had been sold and thus only profits for 1’500 items were recovered. Albeit the profit can only be recovered inasmuch as it is caused by the infringed right, this was not a critical issue in this case: The FPC held that the technical principle protected by the patent in suit was “evidently” the key feature of the infringing, and thus the whole profit could be recovered by the plaintiff. The plaintiff further requested an interest of 5%, without further substantiation; this request was dismissed. The plaintiff also requested damages for costs incurred prior to the suit by the attorney and patent attorney. However, these costs were attributed to costs and compensation to be paid by the defendant.

The FPC further obliged the defendant to destroy any infringing devices that are still in his possession, within 10 days after the decison has become final.

As noted above, the defendant failed to comply with the order of FPC with the prior decision of  14 August 2013 under the threat of the criminal penalty for non-compliance. Consequently, the FPC handed over this matter to the criminal judge for further prosecution.

Reported by Martin WILMING

— BIBLIOGRAPHY—

Case No. O2013_007 ¦ Decision of 19 March 2014 ¦ “Quantitativer Schadenersatz”

WorldConnect AG ./. John Rusillon, owner of the individual company Easy-Tech, Rusillon

Subject(s):

  • Patent Infringement
  • Damages
  • Recovery of profits

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Dr. Mark SCHWEIZER (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (none)

— FULL TEXT OF THE DECISION —

Download (PDF, 114KB)

Everybody can sue everybody for everything (or at least try to do so)

Case No. O2014_005 ¦ Decision of 05 March 2014 ¦ “Nichteintreten; fehlende Begründung”

— THE DECISION IN A NUTSHELL —

An unfortunate plaintiff: Yet two further unsuccessful attempts to make a case pending, in addition to O2012_012. A first writ was held querulous and thus returned to sender. A second writ did not comply with minimal standards, was overly lengthy, side-tracked and invective against authorities. The plaintiff failed to improve this second writ, so the case was finally not considered. Again.

— THE DECISION IN MORE DETAIL —

The present matter is a follow-up of O2012_012. At that time, the FPC did not consider the case in view of incomprehensibility of the claim (Art. 132(1) and (2) CPC; Art. 23(1) lit. a PatCA).

The plaintiff tried the case once again and filed a writ on August 22, 2013. But again, the writ was not in conformance with at least a minimum of formal requirements. The plaintiff did not take learnings from the prior case. Consequently, the President of the FPC returned the querulous writ to the plaintiff; Art. 132(3) CPC.

Next, the plaintiff filed yet another writ on November 4, 2013. At least some progress: The President set a deadline for correction / improvements to the writ (Art. 132(1) and (2) CPC), since the majority of the writ did not deal with any patent infringement at all. Moreover, it was invective against authorities.

Ihre vorliegende Eingabe von 97 Seiten befasst sich, wie Sie selbst ausführen, zu wohl 95% mit dem, was Sie als “ungebührliche Benachteiligung der Aargauer-Bestecher-Behörden” bezeichnen […]. Daneben figurieren weitere Themen (u.a. Tennis-Technik, Tennis-Trainings-tubel-Terror-Tyrannen, Drug-Drops mit Nikotin, Betreibungsamt, Psychiatrie, Untermieter, Anästhesie, Schwester), die mit der konkreten Patentverletzungsklage nichts zu tun haben. Ihre Klageschrift erweist sich deshalb als unzulässig weitschweifig. Zudem ist sie, was die wiederholten Verbalinjurien gegenüber Behörden und Behördenmitglieder angeht, offensichtlich ungebührlich.

Moreover, it was explicitly noted that the writ did not provide any reasons and arguments for the alleged infringement; the President explicitly referred to BGE 131 III 70 for guidance with respect to the proper wording of requests for injunctive relief. The plaintiff also desired legal aid according to Art. 117 ff CPC. The President recommended to use the form which is available online.

The plaintiff improved the writ in due time. However, the requests (recited in section 4 of the decision on p. 4 and 5) were formally defective for various reasons — if not tragicomic. On the merits, the plaintiff failed to provide any comprehensible discussion of claim features in relation to the alleged infringement(s), despite the President’s guidance in this respect. Even worse, the request did not identify any allegedly infringing embodiment of the defendant(s). Consequently, it was decided to not consider the case. The request for legal aid was accordingly dismissed as the case was devoid of any chances of success; Art. 117 lit. b CPC.

No(!) costs were charged on the plaintiff this time, but the FPC emphasized that it might simply archive further submissions of this kind, without comments.

By the way, just in case you are interested in the technical issues at stake: The plaintiff had invoked CH 698 211 B1 and EP 1 449 391 B1; see Swissreg and the EPO Register for further information.

Reported by Martin WILMING

— BIBLIOGRAPHY—

Case No. O2014_005 ¦ Decision of 05 March 2014 ¦ “Nichteintreten; fehlende Begründung”

(not identified) ./. (not identified)

Subject(s):

  • Infringement

Composition of the Board of Judges:

  • Dr. Dieter BRÄNDLE (President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • none

Representative(s) of Defendant(s):

  • none

— FULL TEXT OF THE DECISION —

Download (PDF, 95KB)

Description established (S2013_008 cont’d)

Case No. S2013_008 ¦ Decision of 30 October 2013 ¦ “Vorsorgliche Beschreibung respektive Beweissicherung”

As discussed in detail in an earlier post, a description had been ordered in this matter without prior hearing of the defendant.

The description was carried out as scheduled on 11 September 2013 and the defendant was served with the protocol in order to comment thereon; Art 77(5) PatA.

In first place, the defendant had requested that the plaintiff shall not be served with the description at all. Defendant argued that the patent had not been limited but rather had its scope shifted to an aliud. Moreover, the defendant alleged an undue extension of subject matter during examination proceedings of the patent in suit. The FPC discussed these issues in detail in the decision but did not agree with defendant.

Moreover, the defendant argued that the patent in suit is not infringed. Measurement data was presented (established 12 September 2013, i.e. the day after the description) to show that the pipes do not possess their final dimension immediately after the allegedly infringed method has been carried out (i.e. a few minutes after the production). However, the FPC did not consider this further data, for the time being. Rather, the FPC relied on an opinion — presumably the opinion provided by a court-appointed expert in nullity proceedings at the BGH in Germany;  Xa ZR 84/05 — in support of the plaintiff’s position.

Die Erfüllung dieses Merkmals in diesem Sinne wird im Gutachten zu einem entsprechenden Muffenautomat der C., welcher bei der D. im Einsatz ist, nach Ansicht des Gerichts, wie bereits in der Entscheidung vom 30. August 2013 festgehalten, glaubhaft gezeigt.

Nevertheless, it was noted that the defendant’s arguments and supporting data would have to be considered in main proceedings (when initiated).

Die weiterführenden neueren Messungen der Beklagten und die zugehörige Argumentation der Nichtverletzung sprengen den Rahmen des vorliegenden Verfahrens, welches lediglich die vorsorgliche Feststellung eines Sachverhalts beinhaltet. Sie werden aber gegebenenfalls im Rahmen eines anschliessenden ordentlichen Verfahrens zu beurteilen sein.

As an auxiliary measure, the defendant had requested that the plaintiff shall only obtain a redacted version of the protocol of the description. 31 items were requested to be blacked out since this information was not decisive for the alleged patent infringement but rather constituted trade secrets. The FPC fully accepted this request and the plaintiff will only be served with an accordingly redacted version of the protocol when the decision has become final.

Court fees (CHF 10’000,–), compensation for the defendant’s legal representation (CHF 8’000,–) and costs incurred by the defendant’s patent attorney (CHF 13’759,20) were charged on the plaintiff. Moreover, defendant’s internal expenditures of CHF 9’105,50 were charged on the plaintiff. The plaintiff may request reimbursement of these costs in main proceedings.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_008 ¦ Decision of 30 October 2013 ¦ “Vorsorgliche Beschreibung respektive Beweissicherung”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence; Art. 158 CPC
  • Preliminary measure to secure evidence; Art. 77 PatA
  • Preliminary measure of a precise description; Art. 77 PatA

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Christoph FRAEFEL (SBMP), assisting in patent matters

Full text of the decision right here:

Download (PDF, 141KB)

Criteria for national limitation in Switzerland and under the EPC

Case No. O2012_030 ¦ Decision of 17 September 2013 ¦ “Teilnichtigkeitsklage; Teilverzicht und Beschränkungsverfahren; Disclaimer”

1.  Background of the case

The main hearing in this matter took place on September 17, 2013; see the detailed report in an earlier post.

The patent-in-suit in this nullity case is EP 1 508 436. Initially, the patent was granted as EP 1 508 436 B1 by the EPO without any material objections during prosecution. The search report cited documents JP 8 311417 AWO 02/00802 AEP 1 279 695 AWO 99/48618 A and DE 200 22 503 U as belonging to the technological background (“A”) only. See the EPO file wrapper (6.2 Mb) and the European Patent Register for further details of the prosecution history.

Later-on, the patent-in-suit was subject to centralized limitation proceedings at the EPO in accordance with Art. 105a EPC and was re-published as EP 1 508 436 B3.

The only indenpendent claim 1 of EP 1 508 436 B3 reads as follows :

Self-adhesive tape for closing, sealing and adhering joints, more especially for use in house-building, and more especially joints in corners and edges, said tape having a carrier layer (1) on its upper side, an adhesive coating (2) of the carrier layer (1) on its underside and a removable covering film (3) on its underside, characterised in that at least a first fold portion (4) of the tape is folded-over in the transverse direction along a first folding edge (5) extending in the longitudinal direction of the tape, and in that at least one part of the adhesive coating (2) along a longitudinal portion of the tape is not covered with the covering film (3).

Embodiments of such a tape are illustrated inter alia as follows in the patent in suit (annotation added; click image to enlarge). The portions (4) and (6) can be folded outwards, i.e. upper and lower parts of the carrier layer (1) are not adhesively connected:

Patent in suit, Fig. 2 and 3 (annotated)

Patentee / defendant left the independent claim untouched in centralized limitation proceedings with the EPO. Rather, only dependent claim 16 and a corresponding part of the description was deleted; cf. EP 1 508 436 B1 with tracked changes. This deleted dependent claim related to embodiments wherein the adhesive coating (2) has a non-adhesive central strip.

Patentee / defendant argued that the person of routine skill in the art would understand claim 1 now such that the adhesive coating is devoid of a non-adhesive central strip, in order to distinguish the claimed invention from the prior art, namely document D3 (JP 8 311417 A) already cited in the search report. See Fig. 2 of D3 below (annotations added; click to enlarge):

D3, Fig. 2 (annotated)

In auxiliary requests, the absence of a non-adhesive central strip was even literally recited in claim 1; see below.

2.  Requests

Patentee / defendant requested maintenance of the patent as follows.

Main Request

Claim 1 of EP 1 508 436 B3, but further limited by the intended purpose for use in house building and the feature that the tape is rolled-up to form a roll of adhesive tape (click to enlarge):

Main Request

1st Auxiliary Request (AR1)

Similar to (1.), but reformulated as a use claim (click to enlarge):

1st Auxiliary Request

2nd Auxiliary Request (AR2)

Similar to MR, but with a further negative feature (let’s call it a disclaimer) clarifying that the adhesive coating (2) has no non-adhesive central strip (click to enlarge):

2nd Auxiliary Request

3rd Auxiliary Request (AR3)

Similar to AR1, but again with the disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip (click to enlarge):

3rd Auxiliary Request

3.  The decision of the FPC

Legal interest in the nullity action

The defendant had been served with a warning letter by the plaintiff. However, the warning letter was based on EP 1 508 648 B1, i.e. not the patent-in-suit here. The patentee thus put the legal interest of the defendant in dispute. The FPC clearly held that the — undisputed — competitive relationship between the parties is sufficient to establish a legal interest; see BGE 116 II 196, r. 2.

Differences between CH-PatA and EPC re limitation

This case highlights a potential pitfall in the interplay of centralised EPO limitation and yet further national limitation of the European patent in Switzerland.

In brief, this is how the FPC correlated the provisions of the PatA and the EPC:

According to the PatA, …
… a limited claim must refer to the same invention
(Art. 24(1) lit. c PatA)
Limitation and the same invention implies reduced scope (i.e. no shifted scope), essentially corresponding to the prohibition of Art. 123(3) EPC, i.e. that the patent may not be amended in such a way as to extend the protection it confers.
… define an embodiment that is included in the version of the patent application that determined the date of filing
(Art. 24(1) lit. c PatA)
Essentially corresponding to Art. 123(2) EPC, i.e. that the patent may not be amended in such a way that it contains subject‑matter which extends beyond the content of the application as filed
… define an embodiment that is included in the specification of the published patent
(Art. 24(1) lit. c PatA)
no corresponding provision in the EPC

Beyond the requirements under the EPC, limitation in Switzerland thus requires that the limited claim defines an embodiment that is included in the specification of the published patent. In particular, the FPC referred to BGE 95 II 364 (r. 4f) in this respect. This additional requirement under the PatA was decisive for AR2 and AR3, see below.

MR and AR1

Patentee argued that the person of routine skill in the art would understand the (limited) patent in a sense that the adhesive layer uninterruptedly covers the underside of the tape. The FPC was not convinced. In fact, there are even embodiments in the patent in suit that are perforated through the adhesive layer (see figures above). Thus, D3 was held to be novelty-destroying for both MR and AR1.

AR2 and AR3

As outlined above, the disclaimer in these requests pertains to an embodiment that initially was positively defined as an embodiment according to the invention. Such “disclosed” disclaimers were dealt with in G2/10 of the Enlarged Board of Appeal of the EPO. However, after EPO limitation the (formerly positively disclosed) embodiments were not part of the patent anymore. The criteria of G2/10 were thus no longer applicable here. Rather, the criteria set forth in decisions G1/03 and G2/03  of the Enlarged Board of Appeal of the EPO were to be applied. Since D3 is not “accidentially” novelty destroying but rather pertains to the very same technological field the criteria set forth in G1/03 and G2/03 were not fulfilled, either. The disclaimer in both AR2 and AR3 was thus held inadmissible.

4.  Personal remarks on “limitation of the patent”

Beyond the peculiarities of Swiss limitation requirements discussed above, yet another aspect of the present case is somewhat noteworthy (even though not decisive here): Was the patent indeed “limited by an amendment of the claims” in centralised EPO limitation proceedings, as Art. 105a(1) EPC requires?

As outlined above, independent claim 1 was not amended at all; only a dependent claim (i.e. the optional presence of an additional feature) and the corresponding part of the description was deleted. Can this result in a limitation of the scope of the patent? Generally speaking, I would say “no”. I did not conduct an in-depth literature and case law review, but evidently there is some support for this point of view, e.g.:

According to the EPO, a limitation must reduce the scope of protection of an independent claim by adding a feature. Dependent claims, description and drawings may only be amended in accordance with amendments of the independent claims.
(D. Visser, The annotated European patent convention, Nov. 2012, #1 to R. 95(2) EPC)

Eine Beschränkung setzt dabei stets voraus, dass zumindest in einen unabhängigen Anspruch eine Beschränkung aufgenommen worden ist. Nicht ausreichend ist es hingegen, dass lediglich ein abhängiger Anspruch  […] beschränkt worden ist, da damit der Schutzbereich der geänderten Ansprüche insgesamt nicht beschränkt wird.
(Fitzner · Lutz · Bodewig, Patentrechtskommentar, 2012, #17 to Art. 105 EPC)

This being said, I was quite surprised to see what the EPO Guidelines for Examination (D-X 4.3) say:

More particularly, the limitation of a dependent claim only, without any independent claim being limited, is acceptable.

Thus, limitation in the present case was apparently in conformance with the Guidelines. But, again: Can this be a limitation?

Giving this a second thought, there may well be situations where deletion of a dependent claim reduces the scope of the patent. Assume a patent with the following claims:

  1. Screw, made from steel.
  2. Screw according to claim 1, made from stainless steel.
  3. Screw according to claim 1, made from iron only.
  4. Screw according to claim 1, without any thread.

The description contains the following paragraphs:

[0001] As understood herein, the term “steel” also encompasses the raw materials used in the manufacture of steel, such as e.g. iron.

[0002] As understood herein, the term “screw” encompasses also nails (considered herein as screws without threads).

Evidently, claims 3 and 4 and the corresponding definitions given in para. [0001] and [0002] are contrary to the common understanding of a person of skill in the art of the terms “steel” and “screw”. And, of course, an application like this should not pass examination without an objection under Art. 84 EPC; see EPO Guidelines for Examination (F-IV 4.2). But once the patent is granted as such, definitions stand as they are. That means that — by unconventional definition — the scope of the claim is broader than the mere wording of claim 1 would suggest at first sight. If such an unconventional definition is deleted later on in limitation proceedings (in the claims and the description), it is again the common understanding of the person of skill in the art that counts (thus, steel is not iron anymore, and a nail is no longer a screw). I can only think of situations like these where deletion of a dependent claim reduces the scope of the patent. But in a perfect world, such claim sets should not be granted but rather be objected under Art. 84 EPC. Assuming that the Guidelines are not referring to cases that should not even have passed to grant if the examiner had acted in accordance with the Guidelines during prosecution, I am puzzled about the rationale behind this instruction to the examiners. In my perception this is plain wrong.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_030 ¦ Decision of 17 September 2013 ¦ “Teilnichtigkeitsklage; Teilverzicht und Beschränkungsverfahren; Disclaimer”

Targo Specialty Products AG ./. Silu Verwaltung AG

Subject(s):

  • Nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Reporting judge)
  • Dr. Christoph WILLI (Judge)
  • André WERNER (Judge)
  • Dr. Markus A. MÜLLER (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Thierry CALAME (Lenz & Stähelin)
  • Marco ZARDI (Zardi), assisting in patent matters
  • Udo ALTENBURG (Bardehle, of counsel), assisting in patent matters

Full text of the decision right here:

Download (PDF, 274KB)

Assignment action of GSK ./. Novartis

Case No. O2013_004 ¦ Order of 28 October 2013 ¦ “Streitwert für Gerichtsgebühren bzw. Parteientschädigung”

This assignment action was filed already back in March 2010. In December 2011, the matter had been transferred from the Civil Court Basel to the FPC, on request of the plaintiff. In reconsideration of its decision to transfer the case, the Civil Court Basel (tried to) set aside its decision, but later on held that it was no longer competent to do so. The defendant appealed this decision to the Supreme Court, but the Supreme Court did not consider the appeal since the Civil Court Basel is no higher cantonal court (Art. 75(2) FCA). Instead, the Supreme Court referred the case to Basel’s Court of Appeals for further consideration. Finally, the Court of Appeals Basel transferred the case to the FPC — again. The FPC dismissed the proceedings initially received from the Civil Court (O2012_009) and opened the present proceedings that had been transferred from the Court of Appeals. Here we are, finally.

In parallel, there were arbitration proceedings between the plaintiff and a connected undertaking of the defendant, pertaining to contractual issues.

1.  Background of the case

SyringeThe decision is published in anonymised form, on request of the defendant (cf. r. 5). However, the case made me nosy for at least two reasons. First, the annual turnover generated with the vaccine sold by the plaintiff and manufactured in accordance with the patent is noteworthy. It generated an annual turnover of GBP 192M in 2011, and sales increased by 25% to GBP 238M in 2012. Thus, it must be one of the top selling vaccines. Moreover, the plaintiff and a connected undertaking of the defendant are tied in a supply agreement (cf. r. 5).

Scrabbling this out, it becomes evident that the sales figures perfectly match with Boostrix® and, thus, the plaintiff is GlaxoSmithKline (cf. pages 8 and 58 of the GSK Annual Report 2012).

Boostrix

The patent family concerned is based on WO 2008/020328 A2. From the EPO file wrapper of EP 2 073 841 (a national phase application of WO 2008/020328 A2), even the writ of 29 March 2010 can be derived: Prosecution is currently stayed on request of the plaintiff, and the writ had been filed in support of the request to stay the EPO proceedings. From the writ, it becomes clear that the connected undertaking of the defendant involved in the production of Boostrix® is Novartis Vaccines and Diagnostics GmbH (Marburg, Germany). Evidently, Novartis came into play when it had taken over the former Chiron Behring GmbH & Co. in 2005 (now: Novartis Deutschland).

From the writ, it can be concluded that the competing product Td-Pur® of the defendant does not make use of the manufacturing method according to the patent family in suit.

Td-pur

2.  It’s all about money

Initially, both parties had agreed “preliminarily” on a value in dispute of CHF 1M (cf. e.g. #5 of the writ). However, the FPC fixed the value in dispute to CHF 4M with order of 07 March 2013 in accordance with Art. 91(2) CPC since the information the parties provided in this respect were manifestly incorrect. An advance payment of court fees in the amount of CHF 100’000.– was imposed on the plaintiff accordingly; Art. 1 CostR-PatC. Thereafter, proceedings were stayed on request of both parties until 30 June 2013.

Next, the defendant accepted the plaintiff’s claim on 26 June 2013 (apparently in view of an unfavourable ruling in parallel arbitration proceedings pertaining to the supply contract); see the earlier post in this matter. However, the defendant requested that the court fees and the compensation of the plaintiff be fixed in accordance with a value in dispute of only CHF 1M.

In reply, the plaintiff requested that the value in dispute be fixed to “exceeding” CHF 5M. Moreover, costs for legal representation of CHF 315’781.50 and an additional CHF 79’391.– for costs incurred by the assisting patent attorney were requested to be awarded in full.

The parties were summoned to a hearing scheduled 26 September 2013 in order to provide their final statements in this respect.

The FPC held that it is only possible to bring an action for an unquantified debt when it is impossible or unreasonable to quantify the amount of the debt at the start of the proceedings; Art. 85(1) CPC. That was not the case here. Instead, the plaintiff had apparently estimated the value in dispute at the lower end only in view of the unforeseeable peculiarities of the formerly applicable civil procedure code of Basel. The plaintiff presented arguments in favour of a much higher value in dispute, based on the sales figures given hereinbefore. Additionally, it was referred to the parallel arbitration proceedings where the plaintiff had estimated the value in dispute to at least USD 5M. This was not appreciated by the FPC. The FPC rather held that the plaintif had the underlying facts at hand already at the very beginning of the proceedings. It cannot be tolerated in view of the good faith principle that a party aims to increase the value in dispute when success on the merits of the case is within reach:

Die Argumente und Überlegungen, welche die Klägerin im Nachhinein anführt, […] hätte sie bereits bei Klageeinleitung vorbringen können. […] Aufgrund ihrer heutigen Vorbringen erstaunt es geradezu, wie die Klägerin überhaupt auf einen Streitwert von lediglich CHF 1 Mio. gekommen ist, […]. Es ist somit vielmehr davon auszugehen, dass die Klägerin den Streitwert aus prozesstaktischen Gründen bewusst tief ansetzte, weil — wie sie selber vorbringt — sie ein Unterliegen aus rein prozessualen Gründen aufgrund der alten Basler Zivilprozessordnung nicht habe ausschliessen können. Damit wollte die Klägerin das Risiko allfälliger sie treffender Kosten mindern. Es kann nicht angehen, dass die Klägerin nun im Wissen um den für sie positiven Prozessausgang für die Bemessung der Parteientschädigung den Streitwert auf CHF 5 Mio. übersteigend beziffert mit einer Begründung, deren ihr zugrunde liegende Tatsachen bereits vor Prozessbeginn bekannt waren. Ein solches Verhalten ist aufgrund der Pflicht der Parteien, im Verfahren nach Treu und Glauben zu handeln (Art. 52 CPC), nicht zu schützen.

Thus, the FPC fixed the compensation for legal representation of the plaintiff on the basis of only CHF 1M as a value in dispute. Since neither a main hearing had been scheduled nor a procedure of taking evidence had been necessary, the FPC did only award CHF 50’000,– (N.B. instead of CHF 315’781.50 as requested); Art. 32 and 33 PatCA, Art. 4 and 5 CostR-PatC. Some deductions were made to the requested compensation for the assisting patent attorney in view of costs incurred in the parallel arbitration proceedings; CHF 60’556.50 were awarded instead of the requested CHF 79’391.–.

Despite the elevated value in dispute, actual court fees at the FPC were fixed to only CHF 30’000,– since proceedings at the FPC did not get under steam on the merits at all. The remainder of the advance payment was refunded to the plaintiff.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_004 ¦ Order of 28 October 2013 ¦ “Streitwert für Gerichtsgebühren bzw. Parteientschädigung”

GlaxoSmithKline Biologicals SA ./. Novartis AG

Subject(s):

  • Value in dispute
  • Ownership

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 130KB)

Order to preserve the existing state of affairs lifted (S2013_005 cont’d.)

Case No. S2013_005 ¦ Decision of 17 September 2013 ¦ “Mesures provisionnelles et superprovisionnelles, description, répartition des frais”

The claimant had requested a precise description of an allegedly infringing method at the premises of the defendant according to Art. 77(1) lit. b of the PatA; see the prior post in this matter. The case now took an unexpected turn: The defendant admitted utilization of the allegedly infringing method, but pleads for a right of continued use based on Art. 35 PatA. Consequently, there was no reason for a precise description anymore. In the operative provisions of the decision, the FPC held that the defendant admitted utilization of claim 1 of the patent in suit (from the wording of the claim it’s evidently CH 705 576 B1 of L.A.C. Sàrl-Laboratory for Advanced Coatings Serge Bourquard; see Swissreg), the prior order to preserve the existing state of affairs was lifted and the case was dismissed in accordance with Art. 242 CPC.

The claimant tried to have some of the costs charged on the defendant (Art. 108 CPC), but did not succeed: Costs were charged to the claimant, incl. costs of the defendant for legal representation and assistance of a patent attorney. It remains to be seen whether the claimant will initiate main proceedings for infringement, based on the defendant’s admitted utilization of the method according to the patent in suit. Then, the claimant could also reclaim the costs.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_005 ¦ Decision of 17 September 2013 ¦ “Mesures provisionnelles et superprovisionnelles, description, répartition des frais”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures with/without hearing the defendant; description

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 113KB)

Drospirenone: A masterclass in equivalents

Case No. S2013_001 ¦ Decision of 21 March 2013 (excerpt) ¦ “Auszug aus dem Urteil Nachahmung (Äquivalenz)”

his post has been updated on 02/15/2016 with a more literal translation of the second question, in light of O2014_002.

HEADNOTE

Art. 109 PatA; Art. 69 EPC, Protocol on the Interpretation of Article 69 EPC; Art. 66(1) lit. a PatA:

When an allegedly infringing method or device does not literally fulfil one or more features of the claim but comprises replacing features instead, the following three questions need to be answered in the affirmative in order to conclude that the allegedly infringing method or device is within the scope of the claim:

(1.) Does the replacing feature objectively fulfil the same function? (“Gleichwirkung”)

(2.) Was the person skilled in the art enabled to find the replacing feature as having the same effect? Are the replaced features and their objectively same function rendered obvious by the teaching of the patent to the person of skill in the art? (“Auffindbarkeit”)

(3.) With due consideration of the claim wording in view of the description: Would the person skilled in the art have taken the replacing features into account as being an equivalent solution? (“Gleichwertigkeit”) (r. 17.2)

(Non-official translation from German into English language)

We already catched a glimpse of what was going on earlier this year; see the post on ex-parte injunctions of 26 May 2013. Now, we get some deeper insight into the subject-matter at stake. At first, I felt the take-away message is clear-cut: The FPC assess infringement under the doctrine of equivalents using essentially the Schneidmesser questionnaire established in Germany. That’s it. But this would have been too narrowly considered. On closer scrutiny, things are (much) more difficult. In fact, this case might turn out to be a masterclass in assessment of equivalents in various countries.

1.  Background of the case

Drospirenone
Drospirenone (DRSP; click to enlarge)

The plaintiff sought for preliminary injunctive relief and invoked two European patents: EP 0 918 791 B3 (hereinafter the ‘791 patent; see the European patent register for further details) and EP 1 149 840 B2 (which is a divisional of the ‘791 patent; hereinafter the ‘840 patent); see the European patent register for further details. Both patents relate to methods for the production of drospirenone (DRSP), a compound used in contraceptives (birth control pills).

Drospirenone closely resembles natural progesterone. Drospirenone-containing pills are presumably the most widely prescribed hormonal contraceptives in the world today. Proprietor of both European patents is Bayer Pharma AG, according to Swissreg (cf. here and here). Drospirenone-containing pills are one of the – if not the – best selling product of Bayer Pharma AG; see some further information directly on the website of Bayer Pharma AG. Thus, it’s reasonable to assume that Bayer Pharma AG or a connected undertaking is the plaintiff. The situation is not that clear to me with respect to the defendant(s), and I am not going to speculate.

2. The decision of the FPC

i)  Ex-parte interim measures

As already outlined in an earlier post, the ex-parte injunction in this case was not granted without any prior hearing of the defendant. In fact, the parties had already presented their case in writing, and a hearing with oral reply and rejoinder had already taken place on 31 January 2013. Moreover, the reporting judge had already presented his preliminary opinion on the merits of the case — presumably essentially in the sense of the present decision. Only shortly thereafter, on 7 February 2013, the plaintiff noticed that not all allegedly infringing products were withheld at the customs but that some appeared on the market in Switzerland. Under these circumstances, the FPC granted an ex-parte injunction.

ii)  Rectification of the record

The record of the hearing is quite lengthy (49 p.), and both parties requested rectifications of the record. The plaintiff did so within three days, pointed to five specific issues and indicated precisely what the correction should be. All these rectifications were accordingly made by the FPC.

The defendant filed his request for rectification only after seventeen days. The FPC held that this request was filed too late and thus already failed for this reason. Moreover, the defendant did not indicate what the correction should be, but rather requested the correction to be made on the basis of the tape. The FPC reminded the parties that the record is to contain the overall content of the submissions, but needs not to be a literal transcript (Art. 235(2) CPC; note that the non-official English translation of the CPC fails to properly recite the German wording “dem wesentlichen Inhalt nach“).

iii)  Value in dispute

The plaintiff had estimated the value in dispute to about CHF 500’000,– and indicated that this is a common value in summary proceedings pertaining to patents in the pharaceutical field. On the other hand, the defendant provided a reasoned estimation of the value in dispute to exceed CHF 1’000’000,– . The FPC agreed with the defendant. “Common values” are irrelevant. What counts is the individual assessment of each case.

iv)  Assessment of equivalents

Here we are at the very core of the dispute. A little bit of chemistry is no longer avoidable. Let’s have a look at the final steps in synthesis of drospirenone (DRSP; click to enlarge):

Final steps in synthesis of drospirenone (DRSP)

The starting molecule is the alkine ZK 34506 which is hydrated to form the compound ZK 92836 (step A). Next, ZK 92836 is oxidised to form the cyclic lactone ZK 90965 (step B). Finally, water is eliminated from ZK 90965 to form the enone DRSP (step C).

In simple terms, claim 1 of EP’791 protects the reaction scheme as outlined above, wherein step B is carried out in the presence of a ruthenium salt as a catalyst. Step C is not specified any further.

On the other hand, the only claim 1 of EP’840 specifically pertains to step C only and requires that dehydration is carried out through addition of p-toluenesulfonic acid.

Apparently, the plaintiff sought for injunctive relief with respect to two different methods. With respect to a “first method”, the FPC held that the plaintiff had not credibly shown that this method is effectively used by the (supplier of the) defendant, in particular in view of the injunction issued with decision 4a O 49/12 – Drospirenon of the Dusseldorf regional court; cf. r. 16. This Dusseldorf decision specifically pertains to the dehydration through addition of p-toluenesulfonic acid and refers to WO 2006/061309 A1 in this respect (more specifically to example 7, relating to a method of manufacturing DRSP that does not rely on a ruthenium salt as catalyst in step B, but still uses p-toluenesulfonic acid in step C). Even the plaintiff seemingly suspected that p-toluenesulfonic acid is not used by the defendant (anymore).

The “second method” is the more interesting one. The defendant did not dispute that the “second method” is used. Apparently, the following features were not literally fulfilled:

  • With respect to EP’791, step B is not carried out in the presence of a ruthenium salt as a catalyst, but rather in the presence of TEMPO in combination with Ca(OCl)2.
  • With respect to EP’840, dehydration is not carried out through addition of p-toluenesulfonic acid, but rather in the presence of pyridine/water.

Assessment of infringement of EP’791

The FPC concluded that both the ruthenium salt on the one hand and TEMPO in combination with Ca(OCl)2 on the other hand objectively fulfil the same function (catalysis), in the absence of any further limitation with respect to the specific mechanism of catalysis in the patent in suit (“Gleichwirkung”). The FPC then briefly discussed whether the person skilled in the art was enabled to find TEMPO in combination with Ca(OCl)2 as having the same effect, but finally left this undecided (“Auffindbarkeit”). Rather, the FPC held that the person skilled in the art would not have taken TEMPO in combination with Ca(OCl)2 into account as being an equivalent solution, with due consideration of the claim wording in view of the description (“Gleichwertigkeit”), for the following reasons: First, EP’791 explicitly aims to replace toxic chromium compounds with catalytic amounts of a metal compound. The ruthenium salt catalyis is said to be the key reaction in EP’791 (cf. para.  [0012]). The FPC thus held that this does not suggest the applicability of an organic radical like TEMPO, and EP’791 is not infringed (r. 17.4-17.8).

Apparently, courts in the Netherlands (Rechtsbank Den Haag, C/09/432919 / KG ZA 12-1391), Germany (Dusseldorf regional court, 4a O 190/12 and 4a O 192/12; both confirmed by the higher regional court with decisions 2 U 26/13 and 2 U 25/13, respectively) and Italy (Corto di Appello di Torino) have also issued decisions on this topic. Of course, the final outcome in main proceedings is to be awaited, but this is where we stand today, to the best of my knowledge:

TEMPO / Ca(OCl)2 replacing a ruthenium salt (EP’791) is held to be …
an infringement in … no infringement in …
IT* x
NL x
CH x
DE x
  • From what is discussed in the Dusseldorf decisions, I conclude that the Italian decision relies on an opinion of a court-appointed expert. Unfortunately, I could not yet retrieve a copy of this decision.

Assessment of infringement of EP’840

With p-toluenesulfonic acid, step C of the above reaction scheme is an acid-catalysed elimination of water. On the other hand, pyridine/water is a weakly basic system, relying on a different reaction mechanism. Nevertheless, the result (elimination of water) is the same. The FPC thus held that both reagents fulfill the same function (“Gleichwirkung”). Since both acid- and base-catalysed  elimination reactions are very basic reactions in organic chemistry, the FPC held that the person of skill in the art was enabled to find an appropriate base in general. Moreover, she/he would have also considered pyridine/water in particular since there is a pointer in the introductory part of the patent in suit, i.e. the discussion of the prior art. Therefore, the FPC held that the person of skill in the art was enabled to find pyridine/water as having the same effect (“Auffindbarkeit”). Finally, the FPC held that the person of skill in the art would also have taken pyridine/water into account as an equivalent means, since this reagent is known to her/him (as is evident from the discussion of the prior art in the patent in suit).

Concluding, the FPC held that EP’840 is infringed under the doctrine of equivalents and granted a preliminary injunction.

Again, what’s going on elsewhere? Note that the FPC was aware of the fact that the Rechtsbank Den Haag (C/09/432919 / KG ZA 12-1391) had decided the same question differently (r. 18.3, last para.). Later, the Dusseldorf court in the decisions 4a O 193/12 – Drospirenon II and 4a O 191/12 explicitly took the decision of the FPC into account — and decided for non-infringement. This was confirmed by the Dusseldorf higher regional court in decisions 2 U 23/13 and 2 U 24/13, respectively. To the contrary, the appelate court of Brussels (Belgium) decided for infringement (decision of March 25, 2013 — 2012/KR/127; unfortunately, I could not yet retrieve a copy of this decision). Of course, the final outcome in main proceedings is to be awaited, but this is where we stand today, to the best of my knowledge:

Pyridine/water replacing p-toluenesulfonic acid (EP’840) is held to be …
an infringement in … no infringement in …
NL x
BE x
CH x
DE x

3.  The decision of the Supreme Court

In summary proceedings, the Supreme Court does not examine the case on the merits again. Generally speaking, only violations of the law are reviewed, but not the discretionary adjudication of the first instance. The defendant referred to the decisions of the Dusseldorf regional court; see above. However, this was not considered by the Supreme Court for that it was only lately filed. It would have been interesting to learn more about the Supreme Court’s view on the merits of the case already now, but it’s not much of a surprise that the Supreme Court dismissed the appeal (4A_160/2013).

4.  Remarks

i)  What is not claimed, is disclaimed(?)

Perhaps the best-known statement of the status of the claims in UK law is by Lord Russell of Killowen in Electric and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23, 39 (emphasis added):

The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.

So, how to deal with the following situation:
The claim requires a feature (A). A variant (B) is outlined in the description of the patent, but not in the claims. Is there any room for equivalency, i.e. to cover embodiments with variant (B) under the doctrine of equivalents?

After the decision Okklusionsvorrichtung of the Federal Supreme Court in Germany, some practitioners feared (and some hoped) that the answer might be a clear “No”. In the meantime, the decision Diglycidylverbindung of the Federal Supreme Court provided some further guidance on the assessment in such cases. In a first step, the specific technical effect of the claimed feature (A) has to be determined in order to differentiate it from the alternative feature (B) mentioned in the description but not included in the claim. Second, it has to be established whether the allegedly infringing means provides for the specific technical effect of the claimed feature (A) and thus differs from the alternative feature (B) mentioned only in the description in the same way as the claimed feature (A).

It will be interesting to read a decision of the FPC in such a situation (in the present matter, the pointer to pyridine/water in the introductory part of EP’840 was apparently not held to preclude equivalency). In an obiter dictum, the FPC seemingly tends to assess such situations in line with the Federal Supreme Court in Germany: It is likely that variants explicitly outlined in the description but not in the claims cannot be considered to be covered under the doctrine of equivalents but rather are waived (r. 17.1, last para.).

Wäre das Mittel nämlich in der Beschreibung aufgeführt, aber nicht im Anspruch, müsste daraus voraussichtlich geschlossen werden, dass der Anmelder auf dessen Beanspruchung verzichtet hat und die betreffende Ausführungsart nicht unter Schutz stellen wollte.

ii)  Questionaires for assessement of equivalents – a broader European picture

In order to assess equivalency, the landmark decision in UK is Improver Corporation v Remington Consumer Products Limited (1990) FSR 181, 189. Questions to be answered in the assessement of equivalency are frequently referred to as Improver questions:

(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no-

(2) Would this (i.e. that the variant had no material effect) have been obvious at the date of the publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes –

(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim. On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which included the variant and the literal meaning, the latter meaning, the latter being perhaps the most perfect, best-known or striking example of the class.

In Germany, the Federal Supreme Court (BGH) took over a similar schedule of assessment in the decisions Schneidmesser I and Schneidmesser II:

(1) Does the modified embodiment solve the problem underlying the invention by means which have objectively the same technical effect?

(2) Was the person skilled in the art enabled by his expertise on the priority date to find the modified means as having the same effect?

(3) While answering question two, are the considerations that the person skilled in the art applies drawn from the technical teaching of the patent claim (so that the person skilled in the art took the modified embodiment into account as being an equivalent solution)?

And, finally, the test known from the Formstein decision (X ZR 28/85) of the German Federal Supreme Court (a kind of litmus test to preclude that a claim is construed overly broad, i.e. covering prior art):

(4) Is the modified embodiment anticipated or made obvious by the state of the art?

(A more detailed analysis of the doctrine of equivalents in various jurisdictions can be found in Yale Journal of Law and Technology.)

How was this dealt with in Switzerland by now? Well, questions (1) and (2) were already in use (BGE 97 II 85, r. 2; BGE 97 II 85, r. 1; BGE 125 III 29, r. 3b; BGE 115 II 490, r. 2a.), but a third question was missing — until now. However, the present case strikingly shows that similar questionnaires do not necessarily result in similar decisions. Hopefully, there is no revival of Epilady® or Spannschraube on the rise.

Reported by Martin WILMING


BIBLIOGRAPHY

Case No. S2013_001 ¦ Decision of 21 March 2013 (excerpt) ¦ “Auszug aus dem Urteil Nachahmung (Äquivalenz)”

(not identified) ./. (not identified)

Subject(s):

  • Infringement

Composition of the Board of the FPC:

  • (not identified)

Representative(s) of Plaintiff:

Representative(s) of Defendant:


Full text of the decision right here:

Download (PDF, 128KB)