Case No. O2020_08/15 | Main hearing of 1 April 2021
The main hearing in this matter earlier today was highly interesting.
In brief, Acme Corp. asserts infringement of a European patent by Globex Corp. The tricky thing is that the patent had already been cancelled from the register at the end of its 20y term more than two years(!) before the alleged infringement took place.
Globex Corp. essentially contends that the complaint is simply an impertinence. What no longer exists cannot be infringed. Hank Scorpio, the CEO of Globex Corp., shouted out:
Where would we be?
But it appears to be not that easy. Acme Corp. essentially argued that it has been cheated out of several years of patent term because the patent was granted only more than 15 years(!) after the filing date. In Acme’s view, this demands for a term adjustment to compensate for the delay during prosecution through no fault of their own. Such term adjustments are granted ex officio in the U.S., and Acme argued that this was only fair.
During a break, I had a quick chat with a person who prefers to not see his name on this Blog but who is knowledgeable of the current status of the draft of the forthcoming revision of the Swiss Patent Act; see this Blog here for further information on the draft bill. It appears that some wished for U.S.-style patent term adjustments (similar to 35 U.S.C. 154) during public consultation, which will indeed be included in the final draft of the revised Swiss Patent Act. Accordingly, I understand that we may see patents valid in Switzerland with terms reaching months, if not years beyond the 20y term. This is unprecedented in Europe, to the best of my knowledge!
Stay tuned for further details to be published soon. It may well be that the transitional provisions of the revised PatA turn out to be decisive for the case at hand. And others. Yours, maybe?
Before EP 067 was revoked at the EPO, the judge-rapporteur’s expert opinion had held that EP 067 was valid. I understood from the pleadings that this was essentially due to a different interpretation of the feature ‘Klebefläche’ (adhesion surface). The Board of Appeal held that any surface that can be used for adhesion purposes reads on that feature:
But it appears that the expert opinion concluded that ‘Klebefläche’ implies an adhesive property of that surface. Accordingly, the expert opinion held that EP 067 was valid. This does not matter anymore for EP 067 itself, in view of the EPO’s revocation decision. But the same claim construction issue arises with respect to CH 691. It will be interesting to see how this turns out in the final judgement.
Notably, even though the FPC had requested accelerated appeal proccedings at the EPO, which request was granted, the FPC still followed its own timeline and moved forward with commissioning of the expert opinion.
Which is good, not only because of the second patent-in-suit!
In view of the (maybe, unexpected) claim construction in the judge-rapporteur’s expert opinion, Hafner presented further lines of attack against CH 691. However, these new lines of attack have not been admitted into the proceedings, as requested by Sanipat during the hearing.
On the infringement side, the parties disagree on the correct interpretation of cut protection strip (‘Schnittschutz-Streifen’). This is what the inspection in accordance with Art. 181, 182 CPC was all about. The cutting experiments showed that ISO-SET® could well be cut with relative ease with a knife. Still, ISO-SET® has an aramid backing in the area of the joint to be sealed. The experiment showed that this backing increased the necessary force to cut through the strip about fivefold.
But is that all that is needed to be cut protective?
A reference product (in my understanding, according to the patent in suit beyond dispute) is Flexzarge® Schnittschutz® of GABAG. This product has a metal backing that could not be cut through with a knife.
Hafner argued that the inspection clearly showed that ISO-SET had no cut protection strip; the feature implied that cutting had to be prevented (completely). On the other hand, Sanipat argues that ISO-SET has improved protection against accidential cutting due to the aramid backing, and that Hafner itself claimed that this aramid backing is meant to keep the sealing tight even when the silicone joint is replaced.
Finally, Hafner made an interesting argument on the consequences of unclarity. With reference to Heinrich (PatG 51, N 20), Hafner argued that an unclear claim has no scope at all. But even if one would find this too harsh of a consequence, unclarity should be dealt with in a similar way as in contract law, i.e. in dubio contra stipulatorem (133 III 118, ¶ 2). In Hafner’s view, this should be the case in patent matters a forteriori, since the defendant did not have a chance to proof-read (and accept) the ‘contract’ beforehand.
I could not stop thinking about this over the weekend.
Sure, a patentee has to bear the consequences of an unclear feature in the assessement of validity, simply because an «unclear term cannot be used to distinguish the invention from the prior art» (EPO Guidelines, G VI, 1.); an unclear feature is thus being construed (very) broadly in examination and validity later on. But when a claim is held valid despite the unclarity, can the interpretation of that feature then be any different in terms of infringement?
In O2013_008, the FPC applied the ‘broadest interpretation’ approach in the assessment of infringement of a claim («Da dem Anspruch immer die breiteste Auslegung gegeben werden muss, […]»; see ¶ 4.2, p. 22, last paragraph, emphasis added). Later decisions have frequently referred to this ever since, but with the explanation that such a broad interpretation must not impair the intended functioning of the feature in the context of the invention; see e.g. O2019_003 (¶ 22).
I am not aware of any decision re validity where mercy had been given to an unclear feature. AndI cannot readily see that two different standards of claim construction can be applied in the assessment of validity and infringement, in particular not before one and the same court. However, in the German bifurcated system, the Federal Supreme Court had apparently some sympathy for a narrowest possible claim construction in an infringement case in view of an unclear feature; X ZR 95/05:
It will be interesting to see how the FPC deals with this argument.
We have reported earlier on this Blog here about the litigation betwwen Laurastar and Innosteam about ownership of (the national phases of) two PCT applications, WO 2018/006994 A1 and WO 2018/036653 A1; see the EPO Register here and here. The patent applications are about devices and methods for producing instant steam (WO’994) and instant hot water (WO’653), for use e.g. in devices for ironing.
Nothing has surfaced after the main hearing of 25 June 2019. But now, I came across the FPC’s decision of 20 May 2020 to close the proceedings because the parties have ultimately settled, after a series of suspensions of the further course of the proceedings after the main hearing.
Laurastar is bearing the court fees; no party compensations are awarded.
I understand that the so-called InstantSteam feature is still a major selling point of Innosteam, the efficiency of which purportedly allows for the commercialization of a high end ironing system at an affordable price.
Note that this site visit was not for the purpose of a precise description in accordance with Art. 77(1) lit. b PatA (see e.g. this Blog here), but rather an inspection in accordance with Art. 181, 182 CPC. To the best of my knowledge, this was the first time that the FPC actually conducted such an inspection «in order to see the facts for itself or for a better understanding of the case.»
The judges did not bring any measuring instruments or analytical equipment — but both parties did, and I feel that the judges appreciated the demonstrations and measurements being made on the object of inspection during operation. The results of the measurements (showcased in the header image) have later on been discussed at the hearing .
Getting to the bottom of things is a good thing to do. In my perception, the inspection went smoothly and could (should?) set a precedent.
Glenmark challenges validity of Boehringer Ingelheim’s EP(CH) 1 379 220 H1, which is the Swiss part of EP 1 379 220 B1 after a partial waiver. The patent is about tiotropium capsules for inhalation and relates to BI’s Spiriva® Handihaler® for the management of chronic obstructive pulmonary disease (COPD).
There is big business behind; Spiriva® is still a blockbuster with € 2.3 bn of sales in 2019, but generic competition is on the rise. And it is an uphill fight for BI in view of what courts have already decided elsewhere concerning the very same patent (or a closely related one, such as in Norway). Just to name a few decisions that I could readily spot:
Thanks to Simon HOLZER for bringing the Irish decision to my attention.
Now, which claims are still at stake in the Swiss proceedings? As a quick recap, claim 1 as initially granted reads as follows:
Capsules for inhalation which contain as the inhalable powder tiotropium in admixture with a physiologically acceptable excipient, characterised in that the capsule material has a reduced moisture content as a TEWS or halogen drier moisture content of less than 15%.
Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass als Kapselmaterial Gelatine im Gemisch mit dem Zusatz Polyethylenglycol (PEG) in einem Anteil von 1–10 Gew-%, bevorzugt 3–8 %, verwendet wird und dass das Kapselmaterial einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 10% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.
Claim 3 after waiver
Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass das Kapselmaterial Hydroxypropylmethylcellulose ist und einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 5% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.
I understood from the pleadings that the judge-rapporteur’s expert opinion held that both claims 1 and 3 had been obvious in view of the prior art.
Both parties essentially only argued re (in)validity of claim 3, i.e. inhalation capsules based on hydroxypropyl methylcellulose (hypromellose; HPMC). In particular, the parties apparently dissent on whether claim 3 of EP 220 H1 provides for an (unexpected) advantage over the prior art, or merely an alternative.
I could not stay until the very end of the hearing, but I do not assume that I missed an essential twist of things after the lunch break. Assuming that the parties have not settled, a judgment can be expected early next year.
Note that Sandoz’s generic has been on the market in Switzerland since 26 July 2016. AZ had asserted a different patent against the same generic already in summary proceedings S2016_007, i.e. EP 1 250 138 B2 (see this Blog here), but has apparently withdrawn that request later. Earlier this year, AZ’s complaint based on yet another patent, i.e. EP 1 272 195 B1, has failed, too (O2017_014); see this Blog here. Prior to the present main proceedings, AZ sought interim injunctive relief based on EP’573 (S2019_004), but could not establish urgency anymore; see this Blog here.
Meanwhile, EP’573 comes close to the end of its term, which is 8 January 2021. It will be interesting to see whether the judgment is handed down before the patent lapses.
Validity of EP’573 in view ofHowell andMcLeskey has already been dealt with by the FPC and the Supreme Court in proceedings between AZ and Actavis; see this Blog here. That’s an uphill fight for Sandoz.
But the case is not only about (in)validity of EP’573. Sandoz also disputes that its generic actually infringes EP’573. Note that the claim requires 10% (w/v) of ethanol. Sandoz argues that ethanol refers to the substance EtOH, not to the various degrees of purity of EtOH that are available on the market. Apparently, Sandoz uses 10% EtOH with a purity of 96%, i.e. only 9.6% of the substance EtOH. Sandoz argues that EP’573 itself puts emphasis on certain dilutions of EtOH, e.g. in  and ; and  mentions «about 10%» of ethanol, but not the claim.
Yet another interesting discussion came up with respect to AZ’s expenses for the assisting patent attorneys. Sandoz questioned whether costs incurred by a patent attorney who is a partner of the same law firm that does the legal representation are actually refundable as «necessary expenses» in accordance with Art. 3 lit. a CostR.
Now, what will be first: The end of the 20y term of the patent, or the judgment? Holding a bet, anyone?
As mentioned earlier on this Blog here, Werner & Mertz (well known e.g. for its brands Erdal® and Frosch®) has sued Compad Consulting GmbH for lack of entitlement to a patent application, i.e. unlawful usurpation thereof.
There had already been some attention in the media a while ago (see e.g. here and here), when the defendant had lodged a press release. Apparently, the plaintiff now also approached the media shortly before the hearing. SRF reported again about this case yesterday in Regionaljournal Zentralschweiz:
Frankly, I am not going to participate in reading the tea leafs here, trying to conclude something from the fact that the inventor has waived her right to be publicly mentioned; or that the applicant is not Good Soaps itself, but rather a consulting firm that has given a license to Good Soaps. These things per se may well happen for good and serious reasons. And I cannot readily spot any troll-like behaviour, either.
The main hearing took place earlier today, and it was definitely one worth attending.
Ms Regine SCHNEIDER had met with some people of Werner & Mertz on 27 August 2009 in Mainz, in particular with Mr Karl-Heinz QUADE. That is one of the few things on which the parties can agree. At that time, Ms SCHNEIDER had been employed by Kolb, as head of the business unit New Business. I understood from the pleadings that Ms SCHNEIDER had been decruited on the very next day, i.e. 28 August 2009, and that she was immediately released from work because Kolb closed down the whole business unit. Accordingly, it will be decisive whether the invention — as claimed in the application at stake, or at least the basic concept thereof — had been communicated by Mr QUADE to Ms SCHNEIDER in that meeting.
Evidently, the content of this single meeting is of critical importance. Since there is only very limited written evidence in this respect (only an agenda or invitation, in my understanding), witness testimony will likely be decisive. Accordingly, Ms SCHNEIDER was deposed as a witness today. To the best of my knowledge, this was actually the first time that a witness has been publicly deposed in a main hearing at the FPC. Ms SCHNEIDER was first deposed by the President and the judge-rapporteur, and both parties were given the opportunity to ask follow-up questions. This was actually a pretty smooth exercise.
But, maybe, Mr QUADE remembers things differently(?). Unfortunately, we did not learn more about this meeting from his perspective today. I understood from the pleadings that the defendant had pressed criminal charges against Mr QUADE, for some wrongdoing in connection with the present matter, and that he was therefore prevented from being deposed as a witness in the hearing today. The FPC has apparently initiated proceedings for judicial assistance of the German authorities, to have Mr QUADE deposed in Germany. Defendant’s counsel requested the FPC to reconsider this procedural move: Even if Mr QUADE would confirm all that has been asserted by the plaintiff by now, it would still not be sufficient for the plaintiff to fulfill all three criteria as outlined above. Note that judicial assistance might easily take a further 4-30(!) months.
The further course of the proceedings is not yet cast in stone. If the FPC abstains from having Mr QUADE deposed, the judgment would be issued as a next step. If Mr QUADE is being deposed, the parties will again have an opportunity to comment on his testimony, be it in writing or yet another hearing.
We first reported here that a blockchain infringement case might be pending at the FPC with some involvement of MLL. Shortly thereafter, on June 4, 2020, the official announcement followed and revealed that Sunshine Software Development GmbH had taken action against FRIENDZ SA for alleged infringement of the Swiss part of EP 1 151 591; see EPO Register and Swissreg for further information. Note that the patent has lapsed on 13 January 2020, after 20 years.
FRIENDZ SA describes itself as a start-up that aims to
[…] decentralize the digital advertising industry.
According to their website,
[…] brands can use Friendz Coins to access digital advertising.
These coins seem to be at the center of the present case.
As noted previously, little information is publically available about Sunshine Software Development.
EP 591 is directed to data access and management. From what could be gathered from the arguments made at the hearing, the subject matter of EP 591 seems to be relevant at least to Ethereum, and possibly other blockchain platforms. Much of the discussion related to infringement seemed to evolve around whether defendants shifted («verschieben») or replicated data, or what the difference between the two would be. Specifically, the two independent claims 1 and 30 of EP 591 comprise the following features:
the data storage means shift data redundantly stored in the system independent of an access of the computer unit as a function of the determined parameters of data transmissions between the data storage means.
Apparently, the judge-rapporteur had concluded in his expert opinion that defendants did not shift data, and consequently did not infringe on claims 1 and 30.
We gathered from the pleadings that plaintiffs alleged a replication and subsequent deletion of data, which might realize a shift of data. Defendants appeared to argue that accidental deletion of redundantly saved data would not constitute a shift of data, and that replication was done for data safety reasons.
Speaking of accidental things related to IT, the hearing was up to a rocky start when the monitors of the judges would not work. But a FPC hearing on blockchain was not going to be stopped by some measly IT issue – or was it? The IT gods stepped up their game and also let the microphones fail, and at a later point the projector. But even when every piece of IT had apparently failed at least once during the hearing, the President shrugged off the cluster failure — «[…] ein Clusterausfall!» —, determined to continue the hearing. Cluster failure is apparently not only a potential blockchain issue …
As usual, the parties were asked whether they would be interested in settlement talks under the court’s guidance. Both parties affirmed, though plaintiffs indicated that while the amount of compensation may be negotiable, the validity and infringement would not be.
As always, the public was not allowed to stay for the settlement talks, and it remains to be seen if a judgement will ever see the light of the day.
Some background of the subject-matter at stake can be found on this Blog here. In brief, Synova asserts EP 1 833 636 B1 » against Avonisys, while Avonisys counter-claims for nullity and seeks a declaration of non-infringement. Further bibliographic information about EP 636 B1 » can be found in the European Register and Swissreg.
Sometimes, the Supreme Court clarifies things once and for all. Sometimes, it doesn’t. The very recent decision 4A_583/2019 of 19 August 2020 (published on 28 August 2020) very likely is an example of the latter.
It became clear at the main hearing that the publication of 4A_583/2019 derailed the proceedings to some extent. From the official announcement of the hearing, we already knew that the plaintiff / patentee had partially waived the patent in suit after receipt of the judge-rapporteur’s expert opinion, i.e. well after the closure of the file(request of 19 June 2020, published 14 August 2020); see the corresponding CH/EP 1 833 636 H1.
The independent claims as amended read as follows (available in German only):
Verfahren zur Erzeugung eines Flüssigkeitsstrahls (5), der zur Führung einer in ihn eingekoppelte[n] Laserstrahlung (10) in der Art eines Wellenleiters geeignet istder als Strahlleiter für eine Laserstrahlung (10) dient, wobei eine in ihn eingekoppelte Laserstrahlung (10) in der Art eines Wellenleiters geführt ist zwecks Bearbeitung eines Werkstücks (3), wobei der Flüssigkeitsstrahl (5) mit einer Flüssigkeitsdüse (1) erzeugt wird und wobei derFlüssigkeitsstrahl (5) mantelseitig mit einem Gasstrom (35) umgeben wird, dadurch gekennzeichnet, dass zur Verlängerung des stabilen Bereichs der Strahllänge der Flüssigkeitsstrahl (5) durch eine, entfernt von der Flüssigkeitsdüse (1) angeordnete, den Gasstrom (35) formende Gasauslassdüse (23, 79) hindurchgeführt wird, wobei zwischen der Flüssigkeitsdüse und der Gasauslassdüse (23, 79) ein Zwischenraum mit einer trichterförmigen, nach unten zusammenlaufenden Wandung ausgebildet ist, wobei ein Gehäuse (7) mit einer umlaufenden Wandung (20, 24) als vertikal stehender Doppelkegel mit einander gegenüberliegenden Kegelspitzen ausgebildet ist, wobei in der einen oberen Kegelspitze die Flüssigkeitsdüse und in der gegenüberliegenden unteren Kegelspitze die Gasauslassdüse angeordnet ist, wobei das Beaufschlagungsgas in einen Hohlraum des Gehäuses derart eingebracht wird, dass der eingebrachte Gasstrom den Flüssigkeitsstrahl nicht direkt trifft, sondern dass der gesamte Hohlraum mit dem Beaufschlagungsgas füllbar ist und dass das Beaufschlagungsgas als den Flüssigkeitsstrahl umhüllender Gasstrom das Gehäuse verlässt.
Vorrichtung zur Erzeugung eines Flüssigkeitsstrahls (5), der zur Führung einer in ihn eingekopelten[n] Laserstrahlung (10= in der Art eines Wellenleiters geeignet istder als Strahlleiter für eine Laserstrahlung (10) dient, wobei eine in ihn eingekoppelte Laserstrahlung (10) in der Art eines Wellenleiters geführt ist zwecks Bearbeitung eines Werkstücks (3), mit einer Flüssigkeitsdüse (1) zum Erzeugen des Flüssigkeitsstrahls (5) und mit Mitteln zum mantelseitigen Umgeben des Flüssigkeitsstrahls (5) mit einem Gasstrom (35), dadurch gekennzeichnet, dass zur Verlängerung des stabilen Bereichs der Strahllänge die Mittel zum mantelseitigen Umgeben des Flüssigkeitsstrahls (5) mit einem Gasstrom (35) eine entfernt von der Flüssigkeitsdüse (1) angeordnete, den Gasstrom (35) formende Gasauslassdüse (23, 79) umfassen, durch welche der Flüssigkeitsstrahl (5) hindurchgeführt werden kann, wobei zwischen der Flüssigkeitsdüse und der Gasauslassdüse (23, 79) ein Zwischenraum mit einer trichterförmigen, nach unten zusammenlaufenden Wandung ausgebildet ist, wobei ein Gehäuse (7) mit einer umlaufenden, die Flüssigkeitsdüse aufnehmenden Wandung (20, 24) und mit wenigstens einem Gaseinlass (25a-d) für ein Beaufschlagungsgas vorgesehen ist, wobei der wenigstens eine Gaseinlass (25a-d) der Flüssigkeitsdüse (1) strömungsmässig nachgeordnet ist, und wobei das Gehäuse (7) als Doppelkegel ausgebildet ist, wobei in der einen Kegelspitze die Flüssigkeitsdüse (1) angeordnet ist, und die andere Kegelspitze die Gasauslassdüse (23) hat, wobei das Beaufschlagungsgas in eine m Hohlraum eines Gehäuses derart eingebracht wird, dass der eingebrachte Gasstrom den Flüssigkeitsstrahl nicht direkt trifft, sondern dass der gesamte Hohlraum mit dem Beaufschlagungsgas füllbar ist und dass das Beaufschlagungsgas als den Flüssigkeitsstrahl umhüllender Gasstrom das Gehäuse verlässt.
Thus, the complaint has to be dismissed as devoid of purpose, in view of 4A_583/2019, right?
Oh man, if it only was that easy …
The presiding judge had immediately informed the parties by e-mail of the Supreme Court’s judgment 4A_583/2019, and that the FPC tends towards a decision that the complaint is to be dismissed as devoid of purpose — provided that the defendant did not rely on the partial waiver as a novum.
It was bound to happen: This is exactly what the defendant did the very next day.
The main hearing dealt with only this procedural issue in first place. After deliberation, the presiding judge held that the plaintiff‘s submission of the partial waiver was impermissible, in view of 4A_583/2019. But this did not result in the case being devoid of purpose: The defendant‘s submission of the partial waiver was held to be admissible as a proper novum.
Now that the partial waiver is being considered in the proceedings, it will be highly interesting to see how this finally unfolds, i.e. what this means for the complaint (infringement) and the counterclaim (nullity; declaration of non-infringement).
We understood from the pleadings that the judge-rapporteur’s expert opinion was quite favorable for the defendant in that EP 636 B1 » was not infringed.
The parties did not settle; we are eagerly awaiting the judgment!
As reported by Christopher GILB in the Luzerner Zeitung today, there is some litigation going on at the FPC about entitlement to a European patent pertaining to a washing agent that is free from palm oil.
It appears that Werner & Mertz (well known e.g. for its brands Erdal® and Frosch®) has sued the Swiss start-up company Good Soaps for lack of entitlement to the patent, i.e. unlawful usurpation thereof.
On 5 February 2020 the main hearing in this matter took place at the FPC. We have reported on this matter already on 3 February 2017 when ex parte interim measures had been denied (see this Blog here) and on 26 May 2017 when EPO prosecution and opposition proceedings had been stayed (see this Blog here).
As an introductory remark, the presiding judge invited Tomologic to provide a translation of a Swedish decision that had been submitted earlier; unfortunately, it was not indicated in the hearing what that decision was all about. Even though Bystronic had not commented on that Swedish document, the court felt «not at ease» with having a document on file which is not comprehensible for the judges.
Both parties gave PPT presentations. The presiding judge reminded the parties that this case was already extraordinarily voluminous, even before oral pleadings, and that there was no need to repeat the assertions already made in writing.
Tomologic used flipchart sketches and short films in further support of the PPT presentation. In our perception, flipcharts are generally welcomed by the court. But how tho deal with the table-top microphone in such situations? Any drawer / presenter should be prepared to be reprimanded by the court clerk to use the microphone. Furthermore, flip chart collages, once they are completed, shall form part of the minutes and should not be re-arranged too heavily in later pleadings.
On the merits of the case, we understand that the judge-rapporteur’s expert opinion had been in favor of Bystronic, at least to the extent nullity of EP 864 is concerned. Claim 1 of EP 864 as granted reads as follows (underlined feature amended over claim 1 as originally filed; potentially distinguishing feature over the prior art highlighted in yellow):
Claim 1 of EP 864, marked-up
Method for machine cutting several parts out of a piece of material using a beam cutting technology, said method providing a set of controlling rules and variables for cutting two dimensional shapes or patterns, where one rule or a combination of several rules are used for the cutting operation depending on the shape or pattern to be cut, said shape or pattern forming said parts out of said piece of material, characterised in that said set of controlling rules comprises rules for the forming of a cluster of parts with free form shapes, said parts being positioned so close to each other so that only the thickness of one cut made by the cutting beam is found between adjacent parts whenever the shape of said parts allows it.
It appears that the introduction of «one cut made by» may have caused an issue under Art. 123(2) EPC. Further, the correct understanding of (rules for the forming of a cluster of parts with) «free form shapes» in the characterizing part of the claim was a big issue in the hearing. In Tomologic’s view, this was a reference to «free form nesting». Free form nesting is a technique which — in contrast to «rectangular nesting» or «rectangular bounding box nesting» — arranges free form parts in a space-saving manner, based on perimeter segments rather than outer perimeter boxes.
In a nutshell, Tomologic held that the claim requires forming of a cluster by means of free from nesting. On the contrary, Bystronic held that it could only be the parts themselves which have a free from shape, without any indication whatsoever of the envisaged nesting technique. It is our understanding that only according to Tomologic’s interpretation, the respective claim feature might potentially constitute a differentiating feature over so-called rectangular nesting. At this point of the hearing, the linguistic discussion about English grammar was quite intense. Bystronic explained the difference by way of a «baking dilemma», i.e. that «baking products with yeast» is not necessarily the same as «products baked with yeast»; the term «with» could not be construed as «by means of» at will.
We understood that the expert opinion had apparently held that the feature as claimed is not much of a limitation, and that it does in particular not exclude rectangular clustering; see e.g. ¶  of EP 864 in this respect:
It has been referred in the pleadings re (lack of) novelty to JP H09-285886 (D1, also available as EN translation) and a further document called «Rao» (likely Rao et al., Int J Adv Manuf Tenchnol (2007) 33: 436-448; available here). Further, it was referred to the publication «Faszination Blech» (you cannot make this up).
We conclude from the pleadings that the above issues had likely not been resolved by Tomologic’s auxiliary request(s) to maintain and assert EP 864 in amended / limited form. Rather, the auxiliary request(s) occasioned further issues re clarity and, maybe, enablement.
Interestingly, Bystronic had initially requested a declaratory judgement of non-infringement; see p 1-9 of the complaint as filed and the FPC’s letter of 16 January 2017:
We conclude from the pleadings that the court might have (partially?) not considered this request for declaratory judgement, but this remains to be confirmed in the final judgement.
The pleadings further circled around Bystronic’s alleged contribution to the subject-matter of EP 864, as the basis for the requested assignment to co-ownership. Note that Bystronic had initially requested assignment to co-ownership for the whole patent family of EP 864, as well as the patent family of WO 2012/136262 A1.
The value in dispute was indicated as 2m CHF for the main claim and 1m CHF for the counterclaim. Actual costs incurred by the parties apparently by far exceed the refundable amounts according to the tariff.
The parties finally agreed to have settlement discussions.
The FPC’s seat is in St. Gall — you knew this. But this time, even the inventor is based in St. Gall: Prof. Dr. Beat THÜRLIMANN, chief physician at the breast center of the St. Gall cantonal hospital. A very St. Gall’ish part of the complex portfolio of fulvestrant patents and litigation in Switzerland and beyond, isn’t it?
Note that Sandoz’s generic has been on the market in Switzerland ever since 26 July 2016, despite various attempts of AZ to stop this; see this Blog here (PI proceedings, based on EP 2 266 573 B1) and here(PI proceedings, based on EP 1 250 138 B2). Yet further proceedings between AZ and Sandoz are currently co-pending at the FPC (O2018_010), with AZ asserting infringement of EP 2 266 573 B1 in main proceedings. I understood from the pleadings that AZ’s reply (incl. the first counter to Sandoz’s nullity plea in defense) was due only after this hearing, i.e. on 23 January 2020.
A quick recap of the procedural history
It all started off with a pretty standard exchange of briefs in infringement proceedings (AZ’s submissions in red; Sandoz’s submissions in blue; court interventions in yellow):
10 Jul 2017
Stmt of claim
11 Oct 2017
Stmt of defense w plea for nullity
8 Dec 2017
Partial reply re validity
4 Sep 2018
22 Oct 2018
6 Dec 2018
11 Dec 2018
Closure of the file
18 Jan 2019
Comments on rejoinder
12 Mar 2019
Expert opinion of judge-rapporteur
5 Apr 2019
Summons for main hearing (28 Aug 2019)
10 May 2019
Cmt on expert opinion
Cmt on expert opinion
The judge-rapporteur’s expert opinion had been unfavorable for AZ: In the judge-rapporteur’s view, EP 195 as granted was neither valid nor infringed.
I understood from the pleadings that AZ had apparently asserted EP 195 as granted only, without any ‘verbal limitation’ inter partes, neither as a main request nor as an auxiliary request. Later, proceedings ran off the rails (as defendant put it):
29 Jul 2019
Advance notice, patent will be partially waived
8 Aug 2019
Notice that partial waiver has been filed
12 Aug 2019
Main hearing cancelled; defendant to comment on partially waived patent
I understood from the pleadings that the actual subject-matter of the partially waived patent had never been pleaded by AZ, neither with respect to validity nor infringement. Apparently, it was only at the main hearing that AZ did so — partially due to the fact that the FPC had ordered AZ to respond to defendant’s submission of 11 October 2019 at the main hearing.
the leftovers of the patent in suit after the partial waiver
Use of fulvestrant in the preparation of a medicament for the treatment of a patient with breast cancer who previously has been treated with an aromatase inhibitor and tamoxifen and has failed with such previous treatment.
AZ argued that validity of the partially waived patent had essentially already been decided by the FPC, in proceedings O2018_009 with decision of 27 May 2019 (in line with T 1680/17 of an EPO Board of Appeal), with only the target patient group being now even more more precisely defined. AZ emphasized that this was the trigger for the partial waiver that had been filed only shortly therafter, on 30 July 2019; not defendant’s nullity plea in defense and/or the judge-rapporteur’s expert opinion.
It was also referred to decision X ZR 59/17 of the German Supreme Court, revoking EP 1 250 138 B2 within the same patent family. In AZ’s view, this was due to an incorrect formulation of the technical problem, disregarding the problem-solution approach; and with the threshold for a reasonable expectation of success being set much too low.
Both parties disagreed on what ‘failure with a treatment’ means; see ¶  of EP 195 for a definition. In AZ’s view, this covers both adjuvant and palliative therapy. Defendant pointed out that switching therapy does not necessarily mean that the first therapy had failed. Rather, therapy is frequently switched before resistance occurs; thus, therapy has not yet failed.
Defendant pointed out that no substantiated assertions had been on file until the day before the hearing concerning the actual scope of the partially waived patent, as well as validity and infringement thereof.
Further, admissibility of the partial waiver after formal closure of the file was a big issue. Note that this has also been at stake in the recent decision O2016_012, where the panel of judges had been split 3:2 in favor of admissibility. However, defendant noted that the factual setup was very different. Contrary to the present matter, the partial waiver in O2016_012 did not require any new pleadings or assertions:
In any event, defendant apparently considers the partial waiver after formal closure of the file as an improper novum (‘gewillkürtes Novum’; ‘Potestativ-Novum’), contrary to what had been held in O2016_012. Defendant referred to a decision of the Cantonal Court Zug in this respect, i.e. ES 2018 449. This decision is totally unrelated to patents. But it has been held that a document that has only been created after closure of the file cannot be admitted anymore into the proceedings when the respective assertion of the counterparty had already been made in the statement of defense, i.e. when the document could well have been created and submitted before closure of the file; see ¶2.7:
A document that had only been created after closure of the file, even though the respective assertion that the document was meant to counter had already been made in the statement of defense, is belated.
The presiding judge made an opening remark that ‘contrary to what defendant apparently assumed the court has not yet decided on the admissiblity of the partial waiver after closure of the file.’ That was not much of a surprise. However, the presiding judge further noted that the court is not inclined to decide on that issue while the appeal in case O2016_012 is still pending.
I was flabbergasted. I understood from the later pleadings that admissibility of the partial waiver after formal closure of the file might not necessarily be the decisive issue in this case. But let’s assume it was: Is an informal stay of proceedings appropriate? I have my doubts. It might easily take the Supreme Court six months or more to decide on that issue, which is (much) longer than what it normally takes from the main hearing to the decision being handed down.
Meanwhile in Germany
A PI request of AZ based on EP 195 has been rejected by the Regional Court Dusseldorf (4C O 10/18, 5 July 2018). Likewise, AZ’s appeal failed at the Higher Regional Court (2 U 28/18, 9 January 2018). In a nutshell, AZ could not establish that the treatment regime as claimed had actually been used to an extent that could not remain unnoticed by the defendant (if it had been used at all in more recent times).
Nullity proceedings re EP 195 are pending at the FPC since 14 August 2017, with case no. 3Ni32/17(EP).