Lässer ./. Saurer, reloaded

Case No. O2014_009 ¦ Hearing of 27 January 2016

Dejà-vu! Lässer and Oerlikon Saurer Arbon were already litigating in the matters S2012_004 and S2014_004. We note a change in Lässer’s litigation team: Lässer is now represented by Andri Hess (Homburger). Again, but now for the first time in main proceedings, EP 1 983 083 B1 is at stake. The patent is about heat cut technology used in embroidery machines.

Independent claim 1 of EP’083 reads as follows:

1.   Method for applying flat pieces of material of any desired form onto an embroidery base (Fig. 6: 42) by means of an embroidery machine, wherein at least one material layer is arranged above the embroidery base (42) and, controlled by the program of the embroidery machine, a relative movement is produced between a cutting device (47) and the material layer (Fig. 6: 44), and, as a result, a flat piece of material of the desired form is cut out of the material layer (44), characterised in that the cutting is carried out by a heatable tip (47) and the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

EP 1 983 083 B1, Fig. 3 and 3a
EP 1 983 083 B1, Fig. 3 and 3a

Heatable tip (47) and spacer (55) can be seen e.g. in Fig. 3 and Fig. 3a of the patent; see also paragraph [0017] of EP’083 for further details on the spacer.

Apparently, the interim assessment of the reporting judge had not been in favour of the defendant, neither concerning infringement nor with respect to the plea of nullity.

From what has been discussed in the hearing, it seems that the interim assessment ignored the underlined feature of the claim, at least in the feature analysis. It remains to be seen whether this has the potential to turn the interim assessment or not.

HeatCut illustration (Source: Saurer)
HeatCut illustration (Source: Saurer)

Saurer’s HeatCut technology evidently makes use of a heating tip; see the black tip in the middle of the picture taken from Saurer’s HeatCut website. This technology also relies on so-called fabric pressers; see the silvery bars that are intermittently arranged on top of the fabric. Apparently, a key issue in this case is whether these fabric pressers are spacers (55) in the sense of the patent in suit.

The defendant showed a PowerPoint presentation during his submission; printouts were handed over. Various figures and aspects of this presentation were objected as inadmissible  / in violation of Art. 229 CPC; presentation of new facts and evidence at the main hearing is only admissible if they are so-called proper novae or, at least, improper novae. Hearings are always good for surprises, but the President was not amused:

Erzählen Sie zu dem Bild, was Sie wollen — wir müssen uns das Bild halt wegdenken.

Tell us what you want concerning this picture — we have to imagine it wasn’t there.

Finally, the value in dispute was adjusted. The parties had initially agreed on CHF 300’000,–, but reality is way ahead of this; expenses so far for legal representation: kCHF 127 (plaintiff) and kCHF 221 (defendant); patent attorney costs: kCHF 41 (plaintiff) and kCHF 73 (defendant; in-house patent attorney in the group of companies of the defendant). In view of these relatively high costs the value in dispute was set to CHF 5m; both parties agreed. These party costs are a great deal of money, indeed — but their former case HG.1998.27 before the Commercial Court of St. Gallen had been even more costly.

Both parties agreed to enter into the non-public part of the hearing / settlement negotiations.

Reported by Susanna RUDER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_009 ¦ Hearing of 27 January 2016

Lässer AG Stickmaschinen ./. Oerlikon Saurer Arbon AG

Subject(s):

  • Infringement
  • Plea of nullity

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President, Judge)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • André ROLAND (Judge)
  • Dr. Christian HILTI (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of claimant:

  • Dr. Andri HESS (Homburger)
  • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer AG)
  • n/a, assisting in patent matters

— PATENT IN SUIT —

EP 1 983 083 B1:

Download (PDF, 802KB)

— BE ON THE KNOW —

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Nordson EFD ./. Gema Switzerland

Case No. O2013_008 ¦ Main Hearing of 15 June 2015

The patent in suit is EP 899 016 B1 of Nordson Corp.; the defendant is GEMA Switzerland GmbH. See Swissreg for further bibliographic details of the patent in suit. It pertains to a spray gun like the one shown in Fig. 2:

Fig. 2 of EP 899 016 B1
Fig. 2 of EP 899 016 B1

The only independent claim 1 reads as follows:

An apparatus (20) for use in applying coating material to an object comprising a spray gun (24) having a handle portion (26) Illinois area code , an extension portion (28) which is connected with the handle portion (26), a nozzle (42) connected with the extension portion (28), an electrode (46) disposed adjacent to the nozzle (42) and away from which electrostatically charged coating material flows toward the object, a coating material flow control member (74) connected with the handle portion (26) and manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object, characterised in that the spray gun (24) also has a purge air flow control member (110) connected with the handle portion (26) and which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).

Note that the Federal Patent Court of Germany in a recent decision of April 29, 2015 had maintained the patent only in a limited extent (see DPMAregister and 4 Ni 26/13 for details). It is unclear whether this decision has been appealed.

Neither party was interested in settlement negotiations. We may thus await a decision on the merits of this case.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2013_008 ¦ Main Hearing of 15 June 2015

Nordson EFD ./. GEMA Switzerland GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Herbert LÄDERACH
  • Christoph MÜLLER
  • Dr. Simon HOLZER

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • [unknown]

Representative(s) of Plaintiff:

  • Dr. Christian HILTI (Rentsch)
  • Dr. Jens OTTOW (Rentsch), assisting in patent matters

Representative(s) of Defendant:

— PATENT IN SUIT —

Download (PDF, 1.89MB)

— BE ON THE KNOW —

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Brief report on the main hearing in O2013_009 — “Drospirenone”

Case No. O2013_009 ¦ Main Hearing of 09 December 2014

ContraceptiveThe FPC has already issued a landmark decision Drospirenone in summary proceedings last year. Drospirenone is a compound used in contraceptives (birth control pills). This first decision S2013_001 mainly dealt with the doctrine of equivalents; please refer to the earlier post for all the technical matters that are at stake.

Later on, a procedural decision on the non-consideration of a late filed subsidiary request has been issued.

In a nutshell, infringement of EP 1 149 840 B2 is at stake. It is to be decided whether dehydration in the presence of pyridine/water as the replacing feature is an equivalent to p-toluenesulfonic acid (which is the claimed feature).

I have attended the main hearing yesterday. The parties had already been provided with the preliminary written assessment of a technically qualified judge. This assessment held that the use of pyridine/water infringes the claim under the doctrine of equivalents, in confirmation of the outcome of the summary proceeding S2013_001. The parties referred to sections of this written assessment at page numbers > 30; it is thus reasonable to assume that it already contains an exhaustive discussion of the technical matter at stake.

Thus, it was an uphill struggle for the defendant in the hearing, but it was fought well. The defendant pointed to alleged inconsistencies in the chain of arguments of the written assessment, and I have heard prima facie convincing arguments of both parties. I am keen to read the final decision, to cross-check whether and how yesterday’s hearing changes any of the conclusions of the preliminary assessment. But the parties finally entered into non-public settlement negotiations and it remains to be seen if a final decision will be issued.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_009 ¦ Main Hearing of 09 December 2014

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President; Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Dr. Roland DUX (Judge)
  • Dr. Thomas LEGLER (Judge)

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Gregor S. KÖNIG (KSVR), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Christoph WILLI (Streichenberg)
  • Dr. Rainer FRIEDRICH (df-mp), assisting in patent matters

“HeatCut” technology of embroidery machines litigated again

Case No. S2014_004 ¦ Hearing of 05 June 2014

The parties know each other from an earlier case at the FPC: Lässer and Oerlikon Saurer Arbon were already litigating in the matter S2012_004; see a post commenting on that case here. From my understanding during the course of the hearing, EP 1 983 083 B1 might be at stake now (to be confirmed). Note that this is a patent within the patent family of EP 1 985 736 B1 that had been litigated before.

The claimant asked for interim injunctive relief. At the beginning of the hearing, the claimant had distributed a written statement and used this as the basis for his plea. But only selected parts of the written statement were orally presented. Consequently, it was not clear for the defendant what the basis for his reply should be. The defendant disputed any infringment and insisted on neither using the protected device nor the method according to the patent-in-suit.

In the claimant’s view, interim measures were justified since the (allegedly infringing) “HeatCut” system is excessively used in marketing activities by the defendant and can be used to upgrade existing machines (see e.g. brochure below). It was argued that this would constitute an irreparable harm for the claimant.

As outlined by the defendant, the allegedly infringing device is already on the market since 2011. In fact, it was argued that it is still the same device as in the matter S2012_004 (it was also referred to a parallel law suit in Taiwan). Thus, the defendant argued that no interim measures are to be granted for lack of urgency. 

Both parties agreed to enter into the non-public part of the hearing / settlement negotiations, but the defendant pointed out that taking a license is no option for him.

Reported by Susanna RUDER and Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_004 ¦ Hearing of 05 June 2014

Lässer AG Stickmaschinen ./. Oerlikon Saurer Arbon AG

Subject(s):

  • Infringement
  • Interim measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Judge)
  • Dr. sc. nat. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of claimant:

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer AG)
  • Roland HÜTHER (TMP), assisting in patent matters

— TECHNICAL BACKGROUND —

A brochure on the “HeatCut” technology of the defendant, for ease of understanding of the general technology:

Download (PDF, 4.34MB)

Lundbeck ./. Sandoz settled (S2014_002)

Case No. S2014_002 ¦ Settlement

Last week I have reported on the oral hearing in this matter; see here.

We won’t see a decision of the FPC on the plaintiff’s request to impose a prohibition of sales as an interim measure in extension of the term of the SPC. In the meantime, I have been informed by Simon HOLZER (representative of the plaintiff) that the parties have settled, essentially as follows:

  1. The defendant has accepted to abstain from advertising / offering Escitalopram Sandoz® until May 31, 2014 (lapse of the SPC).
  2. The plaintiff has withdrawn the request to impose a prohibition of promotion / sales / distribution as an interim measure, in extension of the term of the SPC.
  3. Court fees are borne by the defendant.
  4. The defendant has accepted to pay the plaintiff a reasonable compensation.
  5. By fulfilling the settlement both parties agree to have settled all mutual claims resulting from that case.

In my perception, an outcome like this is not much of a surprise: From a business perspective, this makes perfectly sense for both parties.

Reported by Martin WILMING


BIBLIOGRAPHY

Case No. S2014_002 ¦ Settlement

Lundbeck (Schweiz) AG ./. Sandoz Pharmaceuticals AG

Subject(s):

  • Infringement

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)

Representative(s) of Defendant:

Lundbeck ./. Sandoz: Inquiry of (future) demand while the SPC on Escitalopram is still in force

Case No. S2014_002 ¦ Hearing of 06 March 2014

Today’s hearing was announced on the website of the FPC only on February 28, without any details on the merits of the case. In view of this very short notice, I felt that an interim measure without hearing of the defendant might be at stake. Indeed, it is. But let’s first have a look at the pharmaceutical and commercial background:

Escitalopram, the (S)-enantiomer of citalopram
Escitalopram

This case pertains to Lundbeck’s blockbuster drug escitalopram (also known under various trade names such as Lexapro® and Cipralex®). It is an antidepressant of the selective serotonin reuptake inhibitor (SSRI) class which is widely used for the treatment of adults and children over 12 years of age with major depressive disorder (MDD) and generalized anxiety disorder (GAD). Escitalopram is the (S)-enantiomer of citalopram; see the structural formula in the margin. Please revert to MedlinePlus for further information on this drug.

Escitalopram accounted for a (worldwide) revenue of DKKm 5,933 in 2013; see Lundbeck’s Annual Report 2013, p. 15 (approx. 1bn CHF).

Cipralex film-coated tablets
Cipralex® film-coated tablets

These are my personal conclusions and take-away messages from what has been argued by the parties earlier today:

Escitalopram is a mature drug. The corresponding patent EP 0 347 066 B1 was filed already back in 1989 (June 1), and even the SPC is about to lapse on May 30, 2014. According to PharmaWiki, various suppliers of generics have already obtained the market authorization in Switzerland. But, to date, Cipralex is the only available drug on the Swiss market comprising escitalopram (see the so-called Spezialitätenliste). And it is an important one for Lundbeck in Switzerland: It accounts for a turnover of CHF 3m per month which is about 80% of all sales of Lundbeck in Switzerland.

Similar to many other mature blockbuster drugs, there is a lot of litigation going on in many jurisdictions; see e.g. the EPLAW Patent Blog. But the present case is somewhat special. Apparently, sales representatives of the defendant had asked doctors for their (future) demand on escitalopram, well before the lapse of the SPC. The FPC had ordered the defendant to refrain from such activities — without hearing the defendant beforehand. Subsequently, the parties were summoned for today’s hearing.

From what has been discussed in the hearing, I understood that sales representatives of the defendant had used a kind of form for the inquiry. However, the defendant argued that this form had not been intended to be given away. Rather, it was meant as a tool for the sales representatives, i.e. for internal purposes only. Nevertheless, the plaintiff evidently got hold of a photography of such a form. The defendant neither denied authorship nor the actual use of the form. What was denied is that the inquiry of (future) demand could establish an infringement according to Art. 8 PatA. It had not been intended to enter the market before June 1, nor was this an offer. It was only aimed to streamline logistics upon market entry when the SPC will have lapsed on June 1. The defendant pointed out that this intention is underlined by the absence of any specific indication of the defendant’s (generic) product, its price and availability. Moreover, the defendant alleged that the plaintiff himself had notified the doctors of the forthcoming lapse of the SPC. This was disputed by the plaintiff.

The plaintiff argued that this inquiry was a “perfidious” marketing while the SPC is still in force: By asking the doctors for their future demand, they were made readily aware not only of the approaching lapse of the SPC, but also of the defendant as a potential future supplier of the generic version. From my understanding of what has been argued, the plaintiff had documented at least one case where a doctor refrained from immediate stock replenishing after such an inquiry and instead delayed it until the generic version(s) will be available.

Anyhow, the defendant declared to abstain from further use of the form (N.B., without acknowledging any legal obligation); all sales representatives had already been informed accordingly. Although these inquiries had triggered the dispute, a second request of the plaintiff might turn out to have severe implications: The plaintiff sought for an interim injunction being issued for a term of 2½ month after the lapse of the SPC.

The defendant essentially argued that injunctive relief would require the SPC to be still in force since this request relied on the PatA. To the contrary, the plaintiff argued that this request also relies on the law against unfair competition (UCL). Moreover, a prohibition of sales as an action for damages would not be uncommon, in connection with Art. 43 of the Code of Obligations. Inter alia, the plaintiff relied on C-316/95 of the EuC. In that case, samples of medicinal products manufactured in accordance with a patented process had been submitted to the authority competent for issuing marketing authorizations. It was held that a moratorium imposed by the court on the infringer of the patent right, in so far as it seeks to place the proprietor of the patent in the position in which it would, in principle, have been had its rights been respected, cannot in itself be held to be a disproportionate form of reparation.

The defendant emphasized that this case (and similar ones which would have to be decided differently nowadays, anyhow) were fundamentally different in that an infringing act had actually been carried out during the term of the patent or SPC.

Yet another point of discussion was the value in dispute for the moratorium. While the plaintiff argued for CHF 250’000,–, the defendant estimated the value in dispute to exceed CHF 1m.

The parties finally entered into non-public settlement negotiations.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2014_002 ¦ Hearing of 06 March 2014

Lundbeck (Schweiz) AG ./. Sandoz Pharmaceuticals AG

Subject(s):

  • Infringement

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)

Representative(s) of Defendant: