Some recent case law revisited

VESPA’s annual evening conference earlier this week shed light on some key aspects of recent case law of the FPC.

Discussion centred on the following topics:

i)   Protective letters

Protective letters are frequently used. See the most important do’s and don’ts here. In addition, note that protective letters can be filed by a legal representative or the party itself, but not by a patent attorney.

The audience unanimously critcized decisions D2015_035 of 08 March 2016 (hn: A protective letter may not be withdrawn) and, to less extent, D2015_035 of 09 February 2016 (no later addendum to a protective letter, except for proper and improper novae).

By the way: A protective letter may not only be useful in anticipation of a request for ex parte interim injunctive relief, but also in anticipation of a request for preliminary measures to secure evidence like this one here.

ii)   Ex parte interim measures

Decisions S2016_007 (“don’t play games”) and S2017_001 were only briefly touched.

S2017_002 and S2017_003 made clear which requirements are to be fulfilled for an ex parte register ban to be successful; the former failed, the latter has been successful.

It became clear in the discussion that the surprising effect is not the only motivation for practitioners to request ex parte interim measures. Actually, ex parte interim measures are perceived by some as the only way to get speedy relief. Interim measures typically take seven to twelve months if they really dive deep into the subject-matter at stake (which is more the rule rather than the exception). Some participants questioned whether there is actually any difference to main proceedings, besides the fact that judicial vacations are not applicable. Sure, court fees are reduced — but so is the party compensation. On the other hand, parties typically do not perceive that the reasonable effort in summary proceedings is reduced by half.

iii)   Service of process

Two Swiss parts of European patents have been recently revoked by the FPC in judgements rendered in absentia; O2015_007 and O2015_017. The patentees / defendants did not respond at all. At least for O2015_007, it is clear meanwhile that this happened by accident; see the detailed discussion here. In both cases, the U.S. patentee / defendant had been directly served with the writ in accordance with the Hague Convention and Art. 137 CPC. In accordance with U.S. rules, the Swiss embassy in the U.S. thus served the writ to the patentees / defendants by registered letter. In the absence of any reaction, the FPC had published subsequent notifications to the patentees / defendants only in the Swiss Official Gazette of Commerce; Art. 141 CPC.

It has been proposed that the FPC could at least bring the subsequent publications in the Swiss Official Gazette of Commerce also to the attention of the representative on file at the Swiss Federal Institute of Intellectual Property for the patent in suit.

On a personal note: I have my doubts. (I have been involved in O2015_007, but this case is finally concluded now.) It may well appear formalistic to only publish a notification in the Swiss Official Gazette of Commerce when contact details of a representative of the patent are available from Swissreg. As a patent attorney on file in Swissreg, one may easily find it unsatisfactory to just be ignored. But it’s the law. Even if such an additional notification would not constitute a breach of judicial confidentiality: It surely is more than what is required by law. Nota bene: In inter-partes proceedings. Any assistance by a court for the potential benefit of one party is of potential disadvantage for the respective other party; and I cannot see any superordinated public interest, either. This is why I am hesitant. But may the lawyers have their say on this.

iv)   Doctrine of Equivalents

Discussion of decision 4A_131/2016 of the Supreme Court highlighted the apparent gap in the assessment of literal infringement and infringement under the DoE; see this Blog here. But let’s focus on the positive: The three-step questionnaire for the assessment of infringement under the DoE is approved. Let’s await the next decision(s) of the Supreme Court which hopefully provide further guidance.

As to the assessement of the third question in O2015_004, it has been discussed whether the actual wording of a claim is more binding if the alternatives are readily apparent — both for the person skilled in the art reading the patent, as well as for the patentee when drafting the application. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)

v)   Abandonment of subject-matter

A further interesting aspect of O2015_004 surely is the issue of abandonment of subject matter; see this Blog here for further details. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)

vi)   Miscellaneous

Discussion briefly touched decisions 4A_427/2016 of the Supreme Court with respect to the legal standard of implied confidentiality (see this Blog here) and S2016_002 with respect to the admitted prior art as supporting basis for claim construction (see this Blog here).

Reported by Martin WILMING


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Case law of the FPC: Expect some after-work insight on March 30 …

Don’t miss VESPA‘s annual evening seminar on case law of the FPC on Thursday, March 30 in Zurich (Hotel Krone, Schaffhauserstrasse 1, 8006 Zurich). Gain first-hand insight from Tobias BREMI (second ordinary judge at the FPC) and Michael RITSCHER who will lead the discussion. See the programme for details.

The event is free of charge for VESPA members; the fee for non-members is CHF 90,–. Dinner afterwards is offered for CHF 80,–.

Registration deadline is March 24, 2017; please use the registration form below.



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OMG, a nullity plea in defense!?

A defendant in infringement proceedings has two options to challenge the validity of the patent in suit, i.e. (i) to lodge a counterclaim for invalidity, or (ii) to argue for nullity as a plea in defense.

The first scenario is straight forward: Patentees defending a counterclaim for invalidity can present an amended / more limited version of the claims before court, and even auxiliary requests; see e.g. O2012_030.

The situation is somewhat different if nullity is only argued as a plea in defense (which is mostly the case). Note that the court shall declare the (full or partial) nullity of the patent explicitly only on application, i.e. when a counterclaim for nullity is lodged; see Art. 26 and 27 PatA. Now, what can a patentee do to rebut a nullity plea in defense? Sure, he may partially surrender the patent at the Swiss Patent Office (Art. 24 PatA) or at the EPO (Art. 105a EPC), whatever is applicable. But the drawbacks are severe: Timing of the proceedings at the patent offices is not necessarily aligned with the court proceedings, and it is not mandatory for the court to stay the case pending limitation proceedings. Even worse: The patentee must get it right first time. If the limitation is not found to overcome the nullity defense, time will most likely be running out; see e.g. the report on the main hearing in O2012_016.

This constitutes a glaring inequity in favour of the defendant, doesn’t it? Well, in reality it’s not too bad. Tobias BREMI (second permanent judge at the FPC) explained yesterday at a VESPA conference that the court’s approach is apparently very pragmatic: If the patent is only enforced to a limited extent (like e.g. in S2016_002), validity of the patent will only be assessed to that extent in case of a nullity plea in defense. Auxiliary requests may also be presented, even comprising features taken from the description. However, plaintiffs / patentees should be specific: It is not sufficient to just indicate willingness to limit the claim to […] or to use some other wobbling language. And it goes without saying that the request for injunctive relief will have to match the limited version(s) of the claim(s).

So far so good. But the devil is in the detail. Limitation of the request for injunctive relief constitutes a limitation of the action which is explicitly permitted at any time; see Art. 227(3) CPC. However, the right of the plaintiff to present new facts in support of such a limited request is not unrestricted; see O2012_016. But that’s a different story.

Reported by Martin WILMING

VESPA’s annual evening conference: Some further insight into recent case law

VESPA‘s annual evening conference on the case law of the FPC took place today. Tobias BREMI (judge) and Michael RITSCHER (lawyer) gave insightful talks. I have taken notes as follows:

1. Workload

Tobias BREMI gave a sneak preview of the FPC’s annual report 2015 (to be published soon):

  • 19 new cases were received in main proceedings; an increase over 2014 (15 cases).
  • A surprisingly low number of only 4 cases in summary proceedings were received (compared to 9 in 2014).
  • Again, a very high number of cases was settled by compromise in main proceedings, i.e. 84% (compared to 85% in 2014).
  • The share of settlements in summary proceedings is significantly lower (22%, compared to 50% in 2014).
  • The share of cases in the pharmaceutical field is on the rise; the number of cases relating to household things (maybe coffee machines and capsules) apparently decreased.

2. Selected case-law

Tobias BREMI presented three cases, as follows:

i)  O2015_010 (Fulvestrant)

See this Blog here for a brief summary of this case. Reference was made to a similar decision “Geburtsgel” of the cantonal court of Zug (r. 5; see sic! 2012/1):

Anerkennt ein Patentinhaber eine Nichtigkeitsklage auf Einreichung der Klage hin, ist er auch ohne vorgängig verwarnt worden zu sein kosten- und entschädigungspflichtig, wenn er durch sein vorprozessuales Verhalten den Eindruck erweckt hatte, dass er das Patent nicht auf blosse Verwarnung hin hätte löschen lassen.

The take-away message for patentees is clear-cut: Do not maintain obviously invalid Swiss patents if a nullity suit is to be expected. Else, there is a high risk that procedural costs are clapped on you.

ii)  O2013_006 (Hydraulic valve)

See this Blog here and here for a discussion of this case. The main hearing indeed is a tightrope walk: You must not present new matter, you shall not plead, you shall not merely repeat facts and arguments already on file. So what to do? This decision clarified that a didactical summary of key issues is allowed, in particular when the overall duration of the submission is well within normal limits. But this must not be misunderstood: As soon as new matter is presented, you will get interrupted and get busy with attempts to justify your submission, rather than to get your argument through. It is likely that the summons to the main hearing will henceforth make clear that e.g. in Powerpoint presentations one should include notes as to the basis of the content of the slides in the previous submissions.

iii)  O2014_002 (Urinalventil)

See this Blog here for a brief discussion of one key aspect of this very recent decision. No detailed discussion was possible since the decision is not yet final / has been appealed to the Supreme court. However, it seems indeed to be the case that the second question in the assessment of equivalence in Switzerland (i.e. ‘accessibility’) is more along the lines of the corresponding Improver question in U.K. than the Schneidmesser question in Germany (depending on the actual meaning of the latter, which is far from clear). Well, now the Supreme Court will have its say on it.

Reported by Martin WILMING

Patent litigation under the new Civil Procedure Code: How is it going by now?

At an INGRES conference of 5 December 2012, practitioners had the chance to openly discuss their preliminary experience with the new Civil Procedure Code in intellectual property matters in general. Dr. Dieter BRÄNDLE (President of the FPC) and Dr. Tobias BREMI (Second ordinary judge of the FPC) gave presentations with respect to the FPC. Mario J. MINDER drafted a detailed summary of the conference which is available here (in German language only). Based thereon, here is my personal selection of take-away messages:

1.  Assessment of the reporting judge (so-called Fachrichtervotum)

The reporting judge is technically qualified. Thus, time-consuming and costly court opinions will rarely be necessary (only when there is no technically qualified judge available for a specific subject matter).

The parties are provided with the assessment of the reporting judge and may comment thereon in writing or, as the case may be, at the occasion of the oral hearing. If the court nevertheless follows the assessment of the reporting judge, this assessment cannot be challenged other than through an appeal against the decision as such.

Even though the assessment of the reporting judge undoubtedly is a key moment for each case (and a perfect opportunity for the court to induce a settlement in a preparatory hearing according to Art. 8(4) lit. b of the Guidelines on Proceedings before the FPC), the reporting judge does not fulfill the tasks of a single judge. By nature, at least one party will not be fully satisfied with the assessment of the reporting judge, but the case has not yet run out of steam at this point of time. The role of the other judges of the respective board of judges must not be underestimated. Note that all judges have sworn an oath (or taken a vow) pertaining to fulfilling their duties conscientiously; cf. Art. 15 PatCA. This of course includes to critically scrutinize the assessement of the reporting judge rather than letting the assessement through on the nod.

Finally, it is important to recall that the assessment of the reporting judge is no piece of evidence.

2.  Preliminary injuction without hearing the defendant

Requests for preliminary injunctions are mostly dealt with by a panel of three judges, since it is the rule rather than the exception that the understanding of a technical matter is of particular significance (Art. 23(3) PatCA).

Formation of the panel takes at least a few days. This timeframe is used by the FPC to provide the defendant with a possibility to be heard. Only when an element of surprise is of the essence (e.g. in case of confiscation or description / precautionary taking of evidence; cf. below), the FPC might refrain from hearing the defendant beforehand.

3.  Wording of requests for injunctive relief

The proper wording of requests for injunctive relief is crucial: If the wording is insufficient, dismissal of the claim is threatening; cf. herehere and here for examples. The Swiss practice is rather strict. In general, a mere re-formulation of the wording of the patent claim does not suffice; c.f. BGE 131 III 70, r. 3.3. Of course, there may well be exceptions to this rule, e.g. in case of a highly specific wording already in the patent claims, without any functional definitions, umbrella terms, and the like. However, this is what patent attorneys are trained to avoid during patent prosecution at least in the independent claims, in order to obtain the broadest possible scope. In any case, the allegedly infringing embodiment is to be described such that no interpretation or construction of technical terms is required anymore.

4.  Cross-border injunctions

Back in 2006, the ECJ held in C-539/03 (Roche Nederland et al.) that Art. 6(1) of the Council Regulation (EC) 44/2001 / Lugano Convention (to which Switzerland is a member) does not apply to patent infringement proceedings. Moreover, the ECJ held that each country has exclusive jurisdiction in proceedings relating to validity of patents issued by them; cf. C-4/03 (Gat) of same date. Cross-border injunctions have been deemed dead since then.

However, in view of the recent decision C-616/10 of the ECJ, the FPC tends to issue cross-boarder interim measures such as preliminary injunctions in specific cases, namely in cases where defendants are each separately accused of infringing the same national part of a European Patent in yet another Member State and when the same product is concerned. This is good news for litigators. Rest assured that the boundaries will be figured out again.

5.  Amendments of guidelines and regulations

Decisions of the FPC are published in non-anonymised form unless the protection of private or public interests necessitates anonymisation. In case of private interests, Art. 3(3) IR-PatC provided for anonymisation (only) on request. However, the FPC in fact anonymised decisions ex officio for reasons of private interests. Art. 3(3) IR-PatC has been amended accordingly with effect of 01 April 2013 and now reads as follows (non-official translation into English language; amendment marked-up. Please note: This amendment does not yet show up in the English language version of the IR-PatC currently – 17 May 2013 – available on the website of the FPC):

Publication shall take place in non-anonymised form unless the protection of private or public interests necessitates anonymisation. Anonymisation may be carried out ex officio. In the case of private interests, anonymisation shall be done where this is requested and appears to be justified.

The court fees do comprise disbursements, but no translation costs or compensation for witnesses or court experts. This practice has been codified in CostR-PatC with effect of 01 April 2013, now reading as follows (non-official translation into English language; amendment marked-up. Please note: This amendment does not yet show up in the English language version of the CostR-PatC currently – 17 May 2013 – available on the website of the FPC):

In the amounts according to paragraph 1, the court fees are governed by the extent and difficulty of the matter in dispute, the form of the proceedings, and the financial circumstances of the parties. The court fee includes flat charge expenses, but not costs for translations and compensation for court experts and witnesses.

The Guidelines on Proceedings before the FPC will soon be so amended as to provide for the possibility of dissenting opinions of judges being annexed to decisions of the FPC. Such dissenting opinions may also be published.

6.  Practical aspects of a description according to Art. 158(1) lit. a CPC in connection with Art. 77(1) lit. b of the Federal Act on Invention Patents

The Swiss Civil Procedure Code provides for precautionary taking of evidence if “the law grants the right to do so”; Art. 158(1) lit. a CPC. The Federal Act on Invention Patents grants such a right, i.e. interim measures of description; cf. Art. 77(1) lit. b of the Federal Act on Invention Patents and BGE 138 III 76, r. 2.4. This is frequently referred to as saisie helvétique. 

However, it must not be forgotten that the requesting party has to establish prima facie evidence of infringement when requesting a description; cf. Art. 77(2) of the Federal Act on Invention Patents. This does not mean that the prima facie evidence has to cover all features of the allegedely infringed claim (evidently, no description would then be necessary anymore). But for the vast majority of the features of the allegedly infringed claim, prima facie evidence of infringement should already be provided. Mere fishing expeditions are frowned upon. See S2012_007 for an example where a description has been ordered.

7.  Practical aspects of the precautionary taking of evidence according to Art. 158(1) lit. b CPC

Similar to the aforementioned description under Art. 77(1) lit. b of the Federal Act on Invention Patents, prima facie evidence of infringement must also be provided when precautinary taking of evidence under Art. 158(1) lit. b CPC is requested. Otherwise, the legitimate interest is not established; cf. Art. 158(1) lit. b. See S2012_006 for an example that failed to pass this bar.


Pre-emptive brief: Dos and don’ts

In order to prevent the grant of an interim measure / a preliminary injunction without prior hearing, the potential defendant may file a pre-emptive brief with the competent court; Art. 270 CPC. The counterparty will only be served with the pre-emptive brief if he or she in fact initiates the relevant proceedings (contrary to the practice of some courts before entry into force of the CPC). 

At a recent VESPA seminar, I gained some deeper insight into the practice of the FPC with respect to pre-emptive briefs I would like to share:

  • The FPC accepts pre-emptive briefs in English language.
  • Don’t be too detailed. The FPC prefers briefs of only about 5 to 10 pages, mainly indicating a general outline of arguments why an interim measure / a preliminary injunction should not be granted. If the pre-emptive brief could already be interpreted as a complete counterstatement, this might even be counterproductive.
  • Availability to attend a hearing on short notice should be indicated.
  • What if you are not sure about the identity of the counterparty? The FPC tends to accept pre-emptive briefs not only against attacks of the registered patentee or an exclusive licensee, but also against anyone who invokes rights under the patent (e.g. an owner not yet entered into the patent register). However, be prepared that the FPC will then make available the pre-emptive brief to any such potential plaintiff you might not even have guessed beforehand.
  • A pre-emptive brief becomes ineffective six months after it is filed (Art. 270(3) CPC). If this term is not sufficient, the pre-emptive brief needs not to be filed again but can be renewed by refering to the brief already on file and paying the respective administrative fee again (Art. 2(2) CostR-PatC).

Apparently, pre-emptive briefs have already become a routine measure: About 30 were filed with the FPC in 2012.

Reported by Martin WILMING