Go with the flow

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Case No. O2016_009 | Hearing of 29 October 2018

iFlow sensor

Please find some background information about the subject-matter at stake on this Blog here.

In brief, Hamilton Medical AG alleges infringement of its Swiss patent CH 701 755 B1 (see Swissreg for further bibliographic details) by some of imtmedical AG‘s iFlow sensors. The only independent claim 1 of the patent as granted reads as follows:

Durchflussmessfühler (10) mit einem ein zylindrisches Gehäuse (10) definierenden Durchgang mit einer ersten Durchgangsöffnung (13) und einer zweiten Durchgangsöffnung (29); einem im Durchgang des Gehäuses angeordneten Strömungswiderstand (23), welcher das Gehäuse in einen ersten und einen zweiten Gehäuseteil (11 und 27) unterteilt; einer ersten Anschlussstelle (17) mit einer Verbindung zum Innern des ersten Gehäuseteils (11); und einer zweiten Anschlussstelle (19) mit einer Verbindung zum Innern des zweiten Gehäuseteils; dadurch gekennzeichnet, dass die ersten und zweiten Anschlussstellen (17, 19) in einem Abstand voneinander auf dem gleichen Gehäuseteil angeordnet sind.

Fig. 1 of CH 701 755 B1

The defendant denies an infringment, and argues for nullity as a plea in defense.

This case is already pending for two years. Likewise, the main hearing yesterday has been quite lengthy: Plaintiff’s initial pleadings took about 2.5 hours, and defendant’s reply took yet another two hours. The hearing was not even finished thereafter, but we just could not attend any longer. Anyway, some key aspects of the case became pretty clear from both parties’ first pleadings.

In our understanding, the expert opinion of the judge-rapporteur had held that the patent as granted was not valid. However, the judge-rapporteur apparently also held that the patent would be valid in a more limited extent, and that it would still be infringed to that extent. Thereafter, the plaintiff apparently submitted that he only invoked the patent to an extent that had been held valid by the judge-rapporteur. Defendant firmly denied that this ‘verbal limitation’ (verbale Einschränkung) was admissible and argued that the case had to be dismissed if claim 1 of the patent as granted was invalid.

Further, the defendant relied on i) a prior use; and ii) US 6,585,662 when arguing for lack of an inventive step.

Fig. 8 of US 6,585,662
Uphill fight

It remains to be seen how all this turns out, but from what has been argued at the hearing we conclude that it is currently an uphill fight for the defendant. And it did not seem as if this was a case to be concluded with a settlement. Stay tuned.

Reported by Tina VOCI and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_009 | Hearing of 29 October 2018

Hamilton Medical AG
./.
imtmedical AG

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Lorenzo PARRINI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Christoph GASSER (BianchiSchwald)
  • Renato BOLLHALDER (Bohest), assisting in patent matters
  • Dr. Torben MÜLLER (Bohest), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Rudolf RENTSCH (IPrime)
  • Ernst BREM (IPrime)
  • Paul ROSENICH (PPR)
  • Joachim KÜNSCH (PPR)

CH 701 755 B1

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Laurastar and Innosteam Swiss working flat out

Case No. S2018_003 | Hearing of 28 June 2018

UPDATE 14 July 2018:

This post initially mentioned that the prohibition to dispose of the applications at stake has been lifted. We have learned meanwhile that this was unfortunately not correct. Rather, the register ban was maintained. The post has accordingly been corrected.

Laurastar logo

Laurastar and Innosteam are litigating about ownership of two PCT applications filed in the name of Innosteam; see the announcement of the hearing here. It is pretty clear that WO 2018/006994 A1 and WO 2018/036653 A1 are at stake; see the EPO Register here and here.

Innosteam logo

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.

Plaintiff alleges that the two patent applications pertain to subject-matter that has been invented by two of its former employees that are now employed by the defendant. On the contrary, defendant argues that the claimed subject-matter had been invented when the inventors had no longer been employed by the plaintiff. In the hearing, the role of yet another former employee of Laurastar was briefly touched who apparently changed sides, too. He is not named as an inventor in the applications at stake, but from what the defendant has argued we understand that he apparently has referred his new employer to publicly available documents (inter alia patents / patent applications) of his former employer. Further clarification in this respect may well be subject of main proceedings which are pending.

On plaintiffs request, the President of the Court had ordered the defendant in a summary judgement of 20 April 2018 (unpublished) and without hearing the defendant beforehand not to dispose of the two patent applications while the main proceedings are pending.

The hearing was remarkable for some procedural reasons.

First, an exhaustive expert opinion of the judge-rapporteur in accordance with Art. 183(3) CPC has been given orally — for the first time ever, to the best of our knowledge. This expert opinion was not favorable for the plaintiff. The parties were then given the opportunity to comment on the expert opinion immediately thereafter.

Not yet done …

The parties were then asked for their interest in settlement discussions, but both parties denied.

Typically, this would have been it, and a decision on whether or not the interim measures are upheld would be issued in writing. Not so here. The President asked the second judge for his brief opinion, which was unfavorable for the plaintiff, too.

The prohibition for the defendant to dispose of the two patent applications while the main proceedings are pending has been upheld, for the time being.

Reported by Leila MÜLLER and Martin WILMING

BIBLIOGRAPHY

Case No. S2018_003 | Hearing of 28 June 2018

Laurastar SA
./.
Innosteam Swiss SA

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Giovanni GERVASIO

Court Clerk:

  • Agniezka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Jacy PILLONEL (BCP)

ANNOUNCEMENT

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WO 2018/006994 A1

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WO 2018/036653 A1

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Hard materials, hard times …

Case No. O2016_001 ¦ Main Hearing of 3 May 2018

comadur.com

This case started off already on 27 February 2016, between Harcane and Comadur. There is not much known about the plaintiff, but the defendant is a company of the Swatch Group, specialising in hard materials. Noteworthy, the owner of Harcane, Rui Carolla, apparently had spent part of his career with Comadur; see SHAB.

Quite some background information was already included in the official announcement of the hearing. The plaintiff in first place requests that CH 707 572 B1, concerning a binder for an injection molding composition, be declared null and void. As an auxiliary measure, it is requested that the patent be assigned to the plaintiff. Allegedly, the patent lacks novelty over US 5,266,264, several PhD theses and the sale of a certain “feedstock” including the patented binder. The defendant had allegedly been provided with it back in November 2012. Further, the plaintiff alleges that the mixture according to CH 707 572 B1 had in fact been invented by Mr. Lestarquit, who was at the time an employee of the Plaintiff.

The defendant holds the view that the claimed subject-matter is new and inventive. All the compositions had been developed by Mr. Cartier, an employee of the defendant since 1999. The “mix sheets” developed by Mr. Cartier allegedly have only been put into practice by employees of the plaintiff, including Mr. Lestarquit. The defendant thus requests that the case should be dismissed in its entirety.

In the hearing, the alleged obviousness of CH 707 572 B1 was intensely discussed. Both parties had identified the characterizing part of claim 1 as the distinguishing feature, but proposed (opposing) problem-and-solution approaches (EPO Guidelines, G-VII, 5). The expert opinion of the judge-rapporteur had apparently been in favor of the plaintiff. Further, it was discussed whether the feedstock that had been exchanged between the parties during the collaboration had become public / is part of the prior art.

Initially, the defendant had no interest in settlement discussions, in view of some parallel proceedings elsewhere. Rather, the defendant requested that the present proceedings be stayed until after such parallel proceedings are concluded. Still, the defendant finally agreed to enter into settlement discussions as a first step.

Note that CH 707 572 B1 (filed 15 July 2013) has no further family members. However, we came across patent family WO 2014/191304 A1, claiming priority of CH 01021/13, filed 28 May 2013 and published as CH 708 097 A2, which is pretty similar to the patent in suit. It remains to be seen how all this will be sorted out.

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_001 ¦ Main Hearing of 3 May 2018

Harcane Sàrl

./.

Comadur SA

Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Michael STÖRZBBACH
  • Dr. Regula RÜEDI
  • Dr. Thomas LEGLER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

  • Jean-Claude SCHWEIZER (SLB)

Representative(s) of Defendant:

  • Dr. Nathalie TISSOT (Tissot)

ANNOUNCEMENT

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PATENT IN SUIT

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Are rights re-established once and for all?

Case No. O2017_016 ¦ Main Hearing of 25 April 2018

Signpost

I have attended the hearing in this matter earlier today. Infringement of the Swiss SPC C00716606/01 concerning sevelamer is at stake; the basic patent is EP 0 716 606 B1 of Genzyme Corporation. Interim injunctive relief had been granted in earlier proceedings S2016_009; see this Blog here.

Notably, infringement per se is undisputed, as well as validity of the basic patent. However, the defendant (only) alleges that the SPC is invalid because the Office wrongfully granted re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

The parties had been summoned to the main hearing after a single exchange of briefs; plaintiff’s reply and defendant’s rejoinder were pleaded in the hearing. Since the only question at stake is a legal one, this worked out smoothly. It was also noted that no expert opinion of the judge-rapporteur will be established.

Now, can the SPC still be challenged for wrongful reinstatement in the present civil proceedings?

Undisputedly, wrongful reinstatement is not explicitly listed as a ground for nullity in Art. 140k PatA. However, the parties dissent on whether or not the list is exhaustive.

Defendant essentially argued that the Swiss legislator voluntarily aligned the Swiss law with the respective EU regulation, and that also further developments of the EU law need to be taken into account; BGE 129 III 135, ¶6. In the view of the defendant, the ECJ in all its decisions on SPCs essentially declared SPCs invalid whenever its grant had not been objectively justified — irrespective of whether or not the ground was explicitly listed in Art. 15 of Regulation (EC) 469/2009.

Plaintiff disagreed; the ECJ never introduced additional grounds of nullity but rather only interpreted the grounds that are explicitly mentioned. Further, the nullity grounds referred to in Art. 140k(1) lit a PatA explicitly only refer to Art. 146(1). However, the time limit for filing the SPC request is defined in Art. 146(2). The plaintiff noted that this focus only on paragraph 1 underlines the legislator’s intent to not include paragraph 2 into the list of grounds for nullity. Plaintiff further argued that any interested third party could well have appealed the decision of reinstatement (Art. 48 ff APA in the version of 09 December 2003), together with the decision of grant of the SPC – but the defendant failed to do so. See also the summary judgment in ¶3.5 in this respect. The decision on reinstatement is thus formally final, and the defendant has to live with it. Plaintiff further referred to BGE 90 I 186 (¶3) which held that re-establishment of rights according to Art. 47 PatA only concerns the relationship of the patentee to the Office; the effects on third parties are regulated exhaustively (sic!) by Article 48 PatA with the prior user right for bona fide third parties.

The later the day, the more pronounced the arguments: The parties reproached each other for having not been able to refer to a prior decision on precisely this issue to their favour. On the funny side, plaintiff noted that this is only because so far just no one has come up with this absurd idea.

So sad

The parties were then asked by the presiding judge whether they were interested in settlement discussions. Unfortunately, I cannot tell what the answer was because it was requested that the public be excluded before the question is answered, and this request was granted.

UPDATE 05 May 2018:

I meanwhile obtained the request and the grant of reinstatement.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_016 ¦ Main Hearing of 25 April 2018

  1. Genzyme Corporation
  2. Sanofi-Aventis (Suisse) SA

./.

Salmon Pharma GmbH

Composition of the Board of the FPC:

  • Dr. Ralph SCHLOSSER
  • Dr. Tobias BREMI
  • Prof. Dr. Daniel KRAUS
  • Dr. Andreas SCHÖLLHORN SAVARY
  • Dr. Stefan KOHLER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Requester:

Representative(s) of Respondent:

  • Dr. Robert BRINER (CMS)

ANNOUNCEMENT

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BASIC PATENT

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An incredibly complex mechanical writing instrument not of this world

Case No. O2015_018 ¦ Main hearing of 13 March 2018

UPDATE 13 March 2018:

I have added some notes from the hearing below.

The FPC today published an announcement of the main hearing in this matter. The parties apparently have locked jaws about an invention relating to a mechanical writing instrument.

It started off with Guenat‘s request that Swiss Finest‘s CH 704 790 B1 be declared invalid; note that the patent has been limited in March 2017 and re-published as CH 704 790 C1, see Swissreg for further bibliographic details.

The plaintiff argued that the invention had been made by Frédéric Garinaud, an independent inventor who had applied for a European patent for this invention. The application has then been assigned to the plaintiff and a patent was granted; EP 2 479 648 B1, see Swissreg and European Patent Register for further bibliographic details.

Defendant countersued and requested that EP’648 be declared invalid, or assigned to the defendant. Interestingly, defendant argues that the invention had been made by Frédéric Garinaud when he had been working for the defendant. (Note, however, that Mr Garinaud is not mentioned as an inventor on CH’790.)

In addition, defendant requests injunctive relief for the product ‘Mechanical Fountain Pen RMS05‘.

Fountain Pen RMS05 by Richard Mille

This product has some amazing mechanics; see yourself:

Even more amazing is the price tag of $105,000 (as reported by Bloomberg and others).

The hearing will be in French language, and it will be a real ‘town hall’ meeting: The venue this time is not the Federal Administrative Court in St. Gallen, but rather the Hôtel de Ville de Neuchâtel.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_018 ¦ Main hearing of 13 March 2018

Guenat SA Montres Valgine ./.  Swiss Finest SA

CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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NOTES FROM THE HEARING

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Omega ./. Tudor et al.: The aftermath of Baselworld 2015

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega logo

The main hearing in this matter took place earlier today.

See this Blog here for a brief review of the subject-matter at stake, based on the court’s detailed announcement of the hearing.

  1. Background of the case

Infringement of Omega‘s  EP 1 837 719 B1 is at stake; see EPO Register and Swissreg for further bibliographic details.

The single independent claim 1 reads as follows:

Balance for a timepiece movement including a felloe (3), arms (4) connecting the felloe (3) to the balance staff and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia, characterized in that the felloe (3) includes studs (7) directed inwards, a threaded hole (9) into which said inertia blocks (11) are screwed from the inside, passing through said felloe (3) and said studs (7).

This is best understood with Fig. 1 of the patent at hand:

Fig. 1 of the patent in suit

The attacked embodiments are Tudor‘s calibres MT5621 and MT5612; infringement under the Doctrine of Equivalents is alleged. The current versions of the calibres are shown below:

Interestingly, the balance wheels looked a little different when the calibre had been introduced back in 2015 at Baselworld; see here. Do you notice the different balance wheel in the top right of the calibre?

Former promotional material re Tudor’s calibre MT5621

We have found a perspective picture of the old MT5612 balance wheel on the internet here; a similar picture had been shown in the hearing.

When digging a bit deeper, we came across a report in a watch Blog suggesting that the change of the balance wheel had apparently been implemented in view of Omega’s intervention at Baselworld 2015. Indeed, that would be a perfect fit with the case number of the present matter referring back to 2015.

Tudor logo

Now, about three years later, the case surfaces again. Defendants Tudor and Detech deny infringement under the DoE and countersued for invalidity in view of DE 864 827US 759,914US 2,958,997, ROLEX calibres and the common general knowledge of the skilled person.

  1. Learnings from the hearing

Based on what  can be concluded from the pleadings, plaintiff is on the defensive. The expert opinion of the judge-rapporteur had apparently held that the claimed subject-matter (to the extent invoked) was novel, but not inventive. However, the judge-rapporteur had not yet assessed infringement in his expert opinion.

UPDATE Feb 1, 2018:

The first version of this post indicated that the expert opinion of the judge-rapporteur had already addressed infringement. I have been informed by plaintiff’s counsel that this is not the case. Accordingly, this has been corrected in the above. /MW

Most of the discussion was about fulfilment the feature

[…] inertia blocks (11) are screwed into a threaded hole (9) from the inside […].

Evidently, the parties disagree on whether or not this feature is fulfilled in the attacked embodiment(s). Is it sufficient for infringement to be ruled out if the inertia blocks are screwed into the threaded hole from the outside? It remains to bee seen whether fixation from the outside might constitute infringement under the DoE. In particular, plaintiff argued that there was no indication whatsoever in the patent in suit that the direction of fixation was of any relevance. Guess which way the wind is blowing: Pemetrexed.

The final judgment needs to be awaited, to fully understand how the inertia blocks in the attacked embodiments are actually fixed.

The value in dispute is CHF 1M. The parties did not enter into settlement discussions today.

Reported by Jolanda MINDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Judge(s):

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • Dr. Philippe DUCOR
  • Christoph MÜLLER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

PATENT IN SUIT

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Omega ./. Tudor et al.: The next decision on the DoE approaching?

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega logo

The FPC today published an announcement of the main hearing in this matter. Infringement of Omega‘s  EP 1 837 719 B1 is at stake; see EPO Register and Swissreg for further bibliographic details.

The single independent claim 1 reads as follows:

Balance for a timepiece movement including a felloe (3), arms (4) connecting the felloe (3) to the balance staff and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia, characterized in that the felloe (3) includes studs (7) directed inwards, a threaded hole (9) into which said inertia blocks (11) are screwed from the inside, passing through said felloe (3) and said studs (7).

The attacked embodiments are Tudor‘s calibres MT5621 and MT5612; infringement under the Doctrine of Equivalents is alleged.

Defendants Tudor and Detech deny infringement under the DoE and countersued for invalidity in view of DE 864 827US 759,914US 2,958,997, ROLEX calibres and the common general knowledge of the skilled person.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

PATENT IN SUIT

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ANNOUNCEMENT

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BREAKING: FPC to assess SPC granting practice

Case No. O2017_001 ¦ Main hearing of 21 August 2017 @ 10am

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

The FPC published a leaflet earlier today with key bibliographic details of a hearing in the matter O2017_001 (watch out for a link ‘weitere Informationen’ on the list of public hearings):

Further information on the hearing

Such a leaflet has been published for the very first time; it is only available in German language, at least for the time being.

Gilead's Truvada
Truvada®

Nullity of the SPC C00915894 is at stake. The basic patent is EP 0 915 894 B1; see EPO Register and Swissreg.

The pharmaceutical is Gilead‘s Truvada®, a combination of tenofovir disoproxil fumarate and emtricitabine. The medication is used to treat and prevent HIV/AIDS.

Emtricitabine
Emtricitabine
Tenofovir disoproxil fumarate
Tenofovir disoproxil fumarate

The question of whether or not a product is protected by a basic patent is decisive for an SPC both in the European Community (Regulation (EC) No. 469/2009, Art. 3 lit. a) and Switzerland (Art. 140b(1) lit. a PatA).

This appears to be an easy decision at first glance, but the devil is in the detail:

(C) The Court of Justice of the European Union
(C) The Court of Justice of the European Union

Thus, the latest judgements of the CJEU and the Swiss Supreme Court are not in line anymore. The key issue in this matter is whether the Swiss SPC granting practice is to be brought in line with the case law of the CJEU.

When it got public in 2015 that the Swiss Federal Institute of Intellectual Property (FIIP) intended to change its practice to bring it in line with the CJEU case law, some commentators felt that this would draw Switzerland’s SPC granting practice into a future mess. However, this obviously also depends on whose side you’re on. We’ll see …

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_001 ¦ Main hearing of 21 August 2017 @ 10am

Mepha Pharma AG ./. Gilead Sciences Inc.

BASIC PATENT

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SUMMARY

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Fulvestrant, reloaded (and still to be continued)

Case Nos. O2105_011 and O2015_012 ¦ Main hearing of 13 June 2017

A first glimpse of these disputes could be catched in parallel proceedings O2015_010 concerning nullity of AstraZeneca’s CH 696 260 A5 (commented on this Blog here). From r 4 of this decision, it has been evident that nullity proceedings are pending at the FPC for the two corresponding European patents in the same patent family:

The only independent claim 1 of EP’573 reads as follows (emphasis added):

A pharmaceutical formulation for use in the treatment of breast cancer by intra-muscular injection, wherein the pharmaceutical formulation comprises fulvestrant, a pharmaceutically-acceptable alcohol being a mixture of 10 % weight of ethanol per volume of formulation and 10 % weight of benzyl alcohol per volume of formulation, and the formulation contains 15 % weight of benzyl benzoate per volume of formulation and a sufficient amount of a ricinoleate vehicle so as to prepare a formulation of at least 45 mgml-1 of fulvestrant, wherein the ricinoleate vehicle is castor oil, and wherein the total volume of the formulation is 6 ml or less.

EP’138 B2 comprises various independent claims; only claim 1 is given below for illustrative purposes:

Use of fulvestrant in the preparation of a pharmaceutical formulation for the treatment of a benign or malignant disease of the breast or reproductive tract by intra-muscular administration, wherein the formulation comprises fulvestrant in a ricinoleate vehicle, a pharmaceutically acceptable non-aqueous ester solvent, and a pharmaceutically acceptable alcohol, and wherein the formulation is adapted for attaining a therapeutically significant blood plasma fulvestrant concentration for at least 2 weeks.

 

The main hearing covered both cases. We concluded from what has been discussed that  the assessment of inventive step in view of McLeskey and Howell will be key. It would be inappropriate for us to judge on the prospects based on the limited information at hand. But from the pleadings, it became clear that the expert opinion of the judge-rapporteur must have been disadvantageous for the patentee / defendant.

EP’573 has been fully revoked by an OD of the EPO in a hearing of May 8, 2017. The reasoned decision is not yet available, but the President of the FPC pushes for it, repeatedly.

UPDATE Sep 4, 2017:

The OD’s decision is published meanwhile. Appeal proceedings are pending.

Likewise, EP’138 has been fully revoked in Germany, in line with the interim assessment of the German FPC. But the reasoned decision had not been available until Friday before the hearing (Tuesday). The FPC was informed therof by the defendant / patentee in the hearing, and it turned out that the plaintiff’s representatives had not been aware of this at all. The parties will be given the opportunity to comment on this decision in writing.

The patentee / defendant also requested during the hearing that one of his auxiliary requests be amended by addition of yet another feature. The parties disagreed on whether this was admissible at this stage of the proceedings. The President noted that an order or a decision will be issued on this aspect.

If you are interested in what has happened elsewhere, these are corresponding decisions we got get a hand on from public files:

This list surely is incomplete. If you have further references to be included here, please send them in and we will accordingly update the list.

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case Nos. O2105_011 and O2015_012 ¦ Main hearing of 13 June 2017

Actavis Switzerland AG ./. AstraZeneca AB

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Hanny KJELLSAA-BERGER
  • Dr. Prisca VON BALLMOOS
  • Dr. Hannes SPILLMANN
  • Dr. Daniel ALDER

Judge-rapporteur:

  • n/a
    (most likely Dr. Hannes SPILLMANN since the judge-rapporteur has always been referred to by the parties in the male form)

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)
  • Dr. Thorsten BAUSCH (Hoffmann Eitle), assisting in patent matters
  • Dr. Ulrike CIESLA (Hoffmann Eitle), assisting in patent matters

THE ‘138 PATENT IN SUIT

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THE ‘573 PATENT IN SUIT

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PREPARATORY NOTES BEFORE THE HEARING

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Bosch ./. Swiss Confederation

Case No. O2012_021 ¦ Main hearing of 23 September 2016

The file number says it all: It’s a quite old case — but a highly interesting one. It pertains to the performance-related heavy vehicle fee (HVF) levied in Switzerland.

The Robert Bosch LLC of Germany (plaintiff) is patentee of EP 0 741 373 B1, entitled “System for detecting the distance travelled by a vehicle in a given area”. Stakes are high: A compensation of more than CHF 60m has been claimed initially, for an alleged infringement of EP’373.

The plaintiff had partially surrendered the patent in February 2011 by limitation of claim 1 with yet another feature taken from the description, in accordance with Art. 24 lit. c PatA. The limited patent is published as CH/EP 741 373 H1. The only independent claim 1 now reads as follows (amendments over EP’373 marked-up):

System for detecting the distance travelled by a vehicle in a predefined area for the purpose of charging tolls, having the following features:

a vehicle device (FG) with which the distance travelled is continuously measured independently of the respective location is provided in the vehicle,

the vehicle device (FG) comprises an interface to a trip recorder (F);

fixed stations (ASE, ASA) which have means for receiving data emitted by a vehicle device (FG) are provided at least at the entries to the predefined area and the exits from the predefined area,

the vehicle device (FG) has means for transmitting data which communicate the current kilometre reading and a uniquely defined identification number to a fixed station (ASE, ASA) to be passed,

a control centre (Z) to which the fixed stations (ASE, ASA) forward the received data together with information on entry into or exit from the predefined area in order to charge tolls is provided.

Representative illustrations from EP’373:

In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement at the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable. Thus, a first decision has been issued on 07 June 2012; see this Blog here. In a nutshell, the FPC had decided to consider the case as the competent court, for both infringement and damages.

The fulltext decision is embedded below, for avid readers:

Download (PDF, 126KB)

The Supreme Court had a second look at it; see this Blog here. With decision of 05 February 2013 it confirmed that the Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA). But the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.

Here is the fulltext of the Supreme Court’s decision:

Download (PDF, 170KB)

Long time no see: Nothing surfaced since then. Meanwhile, about 3.5 years(!) after the Supreme Court’s decision on competency, the patent has already lapsed on 19 April 2016 (see Swissreg for details). I had assumed the case had settled. Oh, how mistaken I was!

THE MAIN HEARING

The defendant apparently had lodged a nullity suit in reply. It was evident from the pleadings that the interim assessment of the reporting judge did not at all expand on the question of infringement. Instead, the reporting judge (only) held that the patent is not valid for lack of an inventive step, using the problem-and-solution approach. Both parties discussed EP 517 082 A2 as closest prior art.

The plaintiff apparently requested that the patent be maintained in amended form, essentially as follows:

First, on the basis of the claim according to CH/EP 741 373 H1, but with the further limitation that the vehicle device (FG) comprises an interface to the pulse output of a trip recorder (F).

Second, with additional features specifying a bi-directional radio communication of vehicle device (FG) and fixed stations in the frequency range of 5,795 to 5,815 GHz; and that the fixed stations at the entries and exits perform a functional test of the operability of the vehicle device (FG).

Third, with the additional feature that the bi-directional radio communication is carried out by the fixed stations.

Since the patent has lapsed in the meantime, injunctive relief was not an issue anymore. Instead, the plaintiff now requests a declaratory judgement that the patent (as amended) had been infringed. There was also no need anymore for issuance of a compulsory license and/or for a reasonable transition period; the defendant has withdrawn these requests.

The parties also discussed whether the plaintiff’s requests for declaratory judgement were specific enough; whether the plaintiff’s amendments of the claim were admissible after closure of the file; and, finally, the value in dispute which is far beyond the tariff in any event. The plaintiff estimated the value in dispute to CHF 15.5m. On the other hand, the defendant estimated at least CHF 77.5m (according to the initially claimed damages, incl. interest). As noted above, the FPC will not decide on damages. But the value in dispute will of course be relevant for the compensation of the successful party.

The parties finally entered into non-public settlement discussions.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_021 ¦ Main hearing of 23 September 2016

Robert Bosch GmbH

./.

Swiss Confederation (represented by the Federal Department of Finance)

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Daniel VOGEL
  • Dr. Christoph GASSER
  • Dr. Christoph WILLI
  • Dr. Markus A. MÜLLER

Reporting judge:

  • Daniel VOGEL

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

PATENT IN SUIT

EP 741 373 B1:

Download (PDF, 434KB)

CH/EP 741 373 H1:

Download (PDF, 140KB)

NOTES FROM THE HEARING

These updates are not sent out of the courtroom; there is no network connection anyhow. I use the breaks instead, and the time shortly before and after the hearing.

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Coffee break is over: A new frontier in coffee capsule litigation

Case No. S2016_002 ¦ Main hearing of 01 September 2016

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendants.
 
nescafe_dolce_gusto_logo
Logo (© Nestlé)

The plaintiff in this infringement case is Nestlé. It’s all about coffee capsules again. But the Nespresso® system is not concerned this time: Capsules compatible with Nestlé’s Nescafé® Dolce Gusto® system are at stake.

The attacked embodiment is Delica’s Twïn® system that has been introduced on the market in Switzerland in February 2016. A similar system is marketed elsewhere as Café Royal. The Twïn® capsules are compatible with Nescafé® Dolce Gusto® machines, and both systems directly compete in supermarkets. Nestlé now seeks injunctive relief in summary proceedings.

Unlike the Nespresso® system, both the Dolce Gusto® and the Twïn® system enable the customer to draft e.g. a latte macchiato from capsules:

 

Nestlé alleges infringement of EP 1 472 156 B1, i.e. the combination of claims 1, 3 and 9. The relevant claims read as follows:

1.   Capsule designed to be extracted by injection of a fluid under pressure in an extraction device, containing a substance for the preparation of a beverage, comprising a closed chamber containing the said substance and a means allowing the said capsule to be opened at the time of its use and for allowing the said beverage to flow out, characterized in that opening is achieved by relative engagement of the opening means with a retaining wall of the closed chamber and in that the relative engagement is performed under the effect of the rise in pressure of the fluid in the chamber.

3.   Capsule according to Claim 1, characterized in that the opening means (28, 32, 41, 48, 64, 71, 73, 74, 80, 81, 82, 84, 85, 86, 93, 94) is housed outside the closed chamber and in that the retaining wall (29, 33, 40, 45, 72, 92) is moved under the effect of the rise in pressure against the opening means.

9.   Capsule according to Claim 3, characterized in that it comprises a cup (66) with a rim and a bottom having an opening for the outflow of the beverage and a membrane (67) welded to the periphery of the rim of the said cup and in that the means allowing opening comprises recessed and raised elements (73, 74) forming the bottom of the said cup covered by a thin film (72), this thin film tearing on the raised and recessed elements at the time of extraction.

The animated explanation on the Dolce Gusto® website is helpful to understand how the capsule actually works.

The interim assessment of the reporting judge held that this combination of features is not infringed by the Twïn® capsules, mainly in view of differences with respect to the opening means (including the function thereof and its interaction with the thin film to be opened). The defendant additionally argued for non-fulfilment of the two underlined features of the claims recited above.

In order to rebut the interim assessment of the reporting judge the plaintiff had commissioned a second opinion from an IP law firm. The plaintiff emphasized that this firm had assessed the matter completely independently. Right from the outset, the President left no doubt about the fact that this opinion is nothing but a party opinion. In addition, the defendant noted that this firm is regularly involved in disputes against Migros (or connected undertakings) on behalf of counterparties.

Nestlé refused to enter into settlement negotiations.

Reported by Oliver JEKER and Martin WILMING

BIBLIOGRAPHY

Case No. S2016_002 ¦ Main hearing of 01 September 2016

Société des Produits Nestlé S.A.

./.

(1) Migros-Genossenschafts-Bund
(2) Delica AG
(3) Total Capsule Solutions SA

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Kurt STOCKER
  • Dr. Herbert LAEDERACH

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of plaintiff:

  • Dr. Andri HESS (Homburger)
  • Dr. Kurt SUTTER (Blum), assisting in patent matters

Representative(s) of defendant:

PATENT IN SUIT

Download (PDF, 1.3MB)

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ECC forces Nestlé Nespresso onto the defensive, pushes for a decision

Case No. O2015_001 ¦ Main Hearing of 15 June 2016

ECC logo (source: ECC)
ECC logo (Source: ECC)

As reported earlier on this Blog here, Ethical Coffee Company (ECC) has sued Nestlé Nespresso SA for patent infringement. Long time no hear in this matter since February 2015. But now the main hearing took place on 15 June 2016.

Somewhat unexpectedly only the Swiss patent CH 701 971 B1 is at stake; see Swissreg for further details. ECC apparantly has not invoked its corresponding European patent EP 2 312 978 B1; see EPO Register for further details.

The only independent claim 1 of CH’971 reads as follows:

Dispositif pour la préparation d’une boisson extraite à partir d’une capsule (1) comprenant un support de capsule (4) et une cage a capsule (5) a l’intérieur de laquelle sont disposés au moins une entrée d’eau et des moyens de perçage de capsule, caractérise par le fait que ladite cage (5) est agencée de manière à déformer au moins partiellement toute capsule (1) constituée d’un matériau déformable au contact d’eau chaude, qui est disposée dans la cage (5), de manière à ce que la capsule (1) soit retenue dans la cage (5) consécutivement à son contact avec de l’eau chaude.

This (inofficially) translates into English as follows:

Device for preparing a drink extracted from a capsule (1) comprising a capsule support (4) and a capsule cage (5) inside which there are at least a water inlet and capsule-piercing means, characterized in that said cage (5) is arranged in such a way as to deform, at least partially, any capsule (1), made of a material that can be deformed upon contact with hot water, which is placed in the cage (5), so that the capsule (1) is retained in the cage (5) following its contact with hot water.

Confusing, isn’t it? Why should one want a capsule to be retained in the machine? Well, CH’971 itself says this is to discourage the use of capsules that are deformeable upon contact with hot water; see paragraph [0006]. Still confused? It is important to understand that ECC’s biodegradable coffee capsules apparently do not work smoothly with the latest Nespresso machines; they occasionally get stuck — and this is what ECC’s patent is all about; see the mechanical retaining means illustrated e.g. in figures 1 and 2:

ch701971b1_figs

In this example, the internal wall of the cage 5 comprises a recess 6 in the form of an annular groove, the inside of the recess 6 being occupied by a slightly deformable element 7, e.g. an O-ring or a spring which, by allowing itself to be compressed a little, allows a rigid capsule to be inserted into the cage 5, without the capsule 1 becoming deformed. If the capsule 1 softens as a result of its coming into contact with hot water, the side wall of the capsule 1 will be deformed in the region of the recess 6. Once the hot water has been removed, the capsule 1 stiffens and remains jammed in the cage 5, thereby rendering the device inoperative.

The Nespresso® system itself relies on capsules made from aluminum. One would assume that deformation upon contact with hot water is not an issue for these capsules. But for ECC’s biodegradable material, it apparently is. In a nutshell, ECC now claims CH’971 is a patent for the technology it alleges Nestlé Nespresso uses to block its capsules.

Nestlé Nespresso rebuts the alleged infringement; fulfilment of at least the underlined features is denied (see quotation above). In addition, nullity of the patent has been argued as a plea in defense. The plaintiff referred to the decision of an Opposition Division (OD) of the EPO in co-pending opposition proceedings re EP’978 in the same patent family: The opposition filed by Nestec SA has been rejected with decision of 15 March 2016. Note, however, that an appeal is currently still pending (T0696/16). The plaintiff apparently referred to the decision of the OD for the first time only in the hearing. The defendant requested that this reference to the “decision of 29 January 2016” (actually the date of the hearing at the EPO) is belated and thus not to be heard anymore. (Apparently, the court was well aware of at least the existence of the decision of the OD anyhow.)

Further, the defendant elaborated in any detail on an alleged prior user right based on an external contract development project Tolkien; Art. 35 PatA. (Tolkien variants of Nespresso® machines have also been discussed in a UK High Court decision by Arnold J, Nestec SA v Dualit Ltd — [2013] EWHC 923 (Pat); see paragraph [0029].)

Nespresso Production Centre in Avenches, Switzerland
Nespresso® facilities (Source: Nestlé Nespresso)

According to the Wall Street Journal

[t]he stakes for Nestlé are high. All the Nespresso machines currently being sold in Europe, Nespresso’s biggest market, and some of the machines being sold in the U.S. contain the disputed technology.

To get a glimpse of what is going on elsewhere, ECC’s press release of February 10, 2016 is telling. In addition to the present proceedings in Switzerland, ECC has apparently sued Nespresso Deutschland GmbH, Krups GmbH and De’Longhi Deutschland GmbH for infringement of EP’978 and its three utility models DE 20 2010 017 801 U1, DE 20 2010 017 802 U1 and DE 20 2010 017 784 U1. The actions are pending before the District Courts of Düsseldorf (docket no. 4b O 9/16) and Munich (docket no. 7 O 24 470/15); no further information is available to date. Moreover, ECC informed that it has initiated further proceedings in France and Belgium.

We’ll see how all this turns out in the end. The parties did not enter into settlement negotiations; ECC apparently pushes for a decision.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2015_001 ¦ Main Hearing of 15 June 2016

Ethical Coffee Company SA ./. Nestlé Nespresso SA

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Daniel KRAUS
  • Dr. Herbert LAEDERACH
  • Kurt STOCKER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

— PATENT IN SUIT —

Download (PDF, 299KB)

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