Non-return valve for urinals: Does it stink up to the sky? Or is it gas-tight?

Case No. O2014_002 ¦ Main Hearing of 14 September 2015

The patent in suit is EP 1 579 133 B1; plaintiff and currently registered owner of the patent in Swissreg is Daspaco AG.

Independent claim 1 of EP’133 reads as follows:

A non-return valve (3), comprising an inlet section (5) in the form of a self-supporting trough-shaped section and an outlet section, the outlet section being made of a flexible resilient material connected to the inlet section (5), whereby the outlet section comprises a flat flexible resilient strip (6) with a high inherent degree of flexibility, the strip (6) being connected with the inlet section (5) at its upper edge; and further comprising a component that is separate from the strip (6) providing a complementary surface against which the lower end of the flexible strip (6) may seal.

Defendant (1) is Enswico AG. More precisely, it was. Enswico AG has recently sold its operative business, according to information on their website (screenshot below taken today). Bankruptcy proceedings have been opened with decision of 31 August 2015; see Commercial Register. Thus, proceedings have been split and today’s hearing in the matter O2014_002 only concerned the second defendant, Van Allmen AG. Separate proceedings against Enswico AG (in liquidation) will be continued, too (O2015_013). The attacked product is Enswico’s valve used in waterless urinal systems:

This video (see https://youtu.be/-JzslgVMzvI) helps to understand how the valve works:

The second defendant, Von Allmen AG, apparently produced the valves for Enswico AG. Two embodiments of the valve are at stake: A first generation embodiment where the flaps were not connected at the lower end; and a second generation where the two flaps are interconnected by connectors. It has been argued that the second generation embodiment is subject of granted EP 2 553 299 B1 (see characterizing part of claim 1 and Fig. 8 ff).

From what has been argued I conclude that the preliminary assessment of the reporting judge must have been in favour of the plaintiff’s position, i.e. that the patent is infringed (by both embodiments) and valid. Accordingly, the plaintiff’s opening pleadings were succinct, fully supporting the assessment of the reporting judge. Not so the defendant’s reply. In brief, four major issues were adressed in subsequent pleadings of the parties:

i)    (Lack of) distinctiveness of the request

From what has been argued I tend to assume that the claim language “high inherent degree of flexibility” is literally recited in the plaintiff’s request for injunctive relief. Parties dissented on the question of whether or not this wording is specific enough in order to meet the legal requirements as definied e.g. in the decision BGE 131 III 70 E3.3 of the Supreme Court. Defendant insisted that the case should not be considered in view of the improper request.

ii)    Claim construction by the reporting judge

Fig. 3 of D1
Fig. 3 of D1

I understood from the plaintiff’s pleadings that the reporting judge had interpreted a non-return valve according to the patent as a valve which is gas-tight when it is slack, without special outer influences. It was disputed that a gas-tight closure is achieved in the dry state, at least for the second generation embodiment. In a nutshell, defendant argued that if the reporting judge’s assessment were correct, then at least the second generation embodiment cannot infringe since it is not gas-tight without special outer influences. Else, if the construction of this feature was not correct, at least the prior art document D1 (US 3 835 857) would be novelty-destroying for the patent in suit.

Next, the inlet section (5) in the form of a self-supporting trough-shaped section has been discussed. Defendant argued that if in D1 the inlet section was not self-supporting since it is made from the same material as the flaps, then both the first and second generation could not infringe — because the same material is used for both elements.

iii)    Undue extension of subject-matter

Defendant raised various objections in this respect. First, the documents as filed allegedly only disclosed a valve that “has a component (4) having a flat strip (6).” Defendant argued that this implies a one-piece construction, in light of the whole specification (e.g. manufactured in an injection moulding process). To the contrary, claim 1 as recited above requires a connection (of two parts?). Defendant argued that this constitutes an undue extension of subject-matter.

Second, defendant alleged a shift from a complementary component to (only) a complementary surface of such component in the granted claim.

iv)    Equivalency

From the discussion at the hearing, I conclude that two features of the claim were held to be not literally fulfilled by the attacked embodiments, but rather only under the doctrine of equivalents. Interestingly, the features at stake are marked-up as amendments in the DREX, i.e. were at least not irrelevant for the patent to proceed to grant: First, that the component is separate from the strip. Note that the second generation embodiment has connectors (which, in turn, is a patented embodiment; see above). And second, that it is (only?) the lower end of the flexible strip that seals.

Parties finally entered into non-public settlement negotiations.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_002 ¦ Main Hearing of 14 September 2015

Daspaco AG
./.
(1) Enswico AG
(2) Von Allmen AG

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Christoph GASSER
  • Dr. Ralph SCHLOSSER
  • Werner ROSHARDT

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

Representative(s) of Defendant (2):

  • Dr. Demian STAUBER (Rentsch)
  • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
  • Dr. Andri HESS (Homburger), “supporting the team”

— PATENT IN SUIT —

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Under pressure: Von Arx AG ./. Gustav Klauke GmbH

Case No. O2013_006 ¦ Main Hearing of 03 September 2015

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

The patent in suit is EP 944 937 B1 of Gustav Klauke GmbH. The plaintiff in this nullity case is Von Arx AG. See Swissreg for further bibliographic details of the Swiss part of this Europen patent in suit. The patent pertains to a hydraulic pressing device (such as illustrated below) with an automatically actuating return valve for the hydraulic oil. The closed and open positions of this return valve are illustrated in Fig. 1 and 2 of the patent, respectively (click to enlarge):

The only independent claim 1 reads as follows:

Hydraulic pressing device (2) having a stationary part (26) and a moving part (24), the moving part (24) being moved relative to the stationary part (26) by means of a hydraulic piston (9) and being moveable by means of a return spring return into an initial position, wherein the return stroke is releasable in dependence on a predetermined pressing pressure by actuation of a return valve, characterized in that the automatically actuating return valve is built such that it is maintained in the open position during the entire return stroke of the hydraulic piston.

The European patent had already been challenged in EPO opposition / appeal proceedings by other parties but had been upheld as granted; cf. EPO file wrapper and decision T 0861/05 for further details.

Parallel proceedings are ongoing in Germany. In first instance, the Federal Patent Court of Germany has upheld the German part of EP 944 937 B1 in limited form; see decision 6 Ni 47/14 (EP). This wording is also one of the auxiliary requests of the defendant in the Swiss proceedings. Both parties lodged an appeal to the Federal Supreme Court. Infringement proceedings are currently stayed pending nullity proceedings.

The plaintiff alleged that a public prior use of a device was novelty destroying for the patent in suit. It is under dispute which valve had actually been embodied in this device. Moreover, the general mechanism of this valve was extensively discussed.

Some discussion came up concerning the extent of submissions in the main hearing, e.g. whether repetition of facts and arguments already on file is allowed or not. The President made clear that a didactical summary of key issues is allowed, in particular when the overall duration of the submission is well within normal limits. In any event,

[…] die Teilnahme an einer Hauptverhandlung ist kein Besuch auf dem Ponyhof!

Loosely translated, just a pointed closing remark: A main hearing is no walk in the park.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2013_006 ¦ Main Hearing of 03 September 2015

Von Arx AG ./. Gustav Klauke GmbH

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Kurt SUTTER

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— PATENT IN SUIT —

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Litigation on clamping systems: Matter fixed?

Case No. O2012_016 ¦ Main Hearing of 03 December 2014

This case pertains to clamping systems for compacting of metal and ceramic powder. Parties to the proceedings are Erowa AG as the plaintiff and ProGrit GmbH as the defendant.

The allegedly infringing devices of the defendant are abbreviated as RCS (roller clamping system) and SCS (segmented clamping system). Screenshots taken on 06 January 2015 from the defendant’s website are embedded below.

Note that the roller clamping system RCS is not available in Germany and Austria, but rather only a

new version RCS II without heightended surface sections at the chuck.

From the hearing, it became evident that this suit had been lodged already more than 5 years ago; it had thus been transferred to the FPC from a formerly competent cantonal court. Moreover, the parties have been before courts in other jurisdictions on this matter, too (see references below for each of the patents in dispute). Noteworthy, Progrit’s managing partner Dietmar Walter Kramer had been Head R&D at Erowa until 2004 (cf. CV, as found online on December 24, 2014; markup added).

1.  THE PATENTS IN SUIT

i)  The Swiss part of EP 1 068 918 B1

The first patent in suit is the Swiss part of EP 1 068 918 B1. Please see Swissreg for the bibliographic details.

As indicated above, this matter was also litigated elsewhere, e.g. in Germany. Please see DPMAregister for bibliographic details of the German part of the European patent. In Germany, the patent has most recently been upheld in amended form, published as DE 500 08 295 C5; see the decision 4 Ni 43/10 (EP) of the German Federal Patent Court (issued 08 November 2012) and the decision X Zr 148/12 of the German Supreme Court (issued 29 July 2014); and a correction thereof.

The courts in Dusseldorf dealt with the corresponding infringment proceedings; see decision 4a O 270/09 of the Dusseldorf Regional Court (LG) and decision 2 U 29/13 of the Dusseldorf Higher Regional Court (OLG). The decision of the OLG already takes into account the amended wording of the patent as upheld by the Supreme Court with decision X Zr 148/12 (see above).

ii)  The Swiss part of EP 1 068 919 B1

The second patent in suit is the Swiss part of EP 1 068 919 B1. Please see Swissreg for the bibliographic details.

The German counterpart was also litigated in Germany. Please see DPMAregister for bibliographic details. In first instance, the German Federal Patent Court decided to maintain the patent in amended form; see decision 4 Ni 20/11 (EP) of 24 September 2013 (the decision is res judicata).

Again, corresponding infringement proceedings were dealt with by the Dusseldorf courts; see decision 4a O 84/10 of the Dusseldorf Regional Court (LG) and decision 2 U 58/11 of the Dusseldorf Higher Regional Court (OLG).

iii)  CH 699 547 B1

The third patent in suit is CH 699 547 B1; see Swissreg for the bibliographic details.

2.  WHAT THE HEARING WAS ALL ABOUT

The hearing was somewhat exceptional in that the discussion did not concern technical matters at all. Rather, pleadings revolved around highly interesting points of law.

i)  Allowable submissions after closure of the file

last chance
Not always that clear

A first issue relates to the restriction of the request for injunctive relief. It was undisputed that a restriction of the request for injunctive relief constitutes a limitation of the claim which is explicitly permitted at any time; see Art. 227(3) CPC. However, the right of the plaintiff to present new facts in support of such a restricted request was under dispute. Note that the amendment(s) to the requests were made only after the second round of written submissions, i.e. when the closure of the file (“Aktenschluss”) had already occured; see Art. 229(2) CPC and the decision 4A_73/2014 (r. 6.3.2.3) of the Supreme Court. Go figure: Being allowed to limit your request for injunctive relief, but not being allowed to freely argue in support of this limited request? That’s a nasty situation for a plaintiff!

The plaintiff argued that Art. 227(3) CPC should overrule Art. 229 CPC. Otherwise, a limitation of the claim (which is explicitly permitted in Art. 227(3) CPC at any time) would be impossible in patent infringement proceedings. In practice, it is rather unlikely that a patentee would be in a position to argue in support of infringement of a limited request and validity of a limited patent claim (see below) without having to present new facts. You cannot reasonably stockpile for each and every situation that might occur, be it a decision of a foreign court in co-pending proceedings on the same patent family, or new prior art that comes to light.

Moreover, the plaintiff argued that even the requirements of Art. 229 CPC were fulfilled for all patents in suit, essentially as follows:

The decision of the German Federal Supreme Court with respect to the German counterpart of the first patent in suit (see above) constitutes proper nova; see Art. 229(1) lit. a CPC and the decision 5A_568/2012 of the Swiss Federal Supreme Court, r. 4. Moreover, the patentee / plaintiff had partially surrendered the patent vis-à-vis the Patent Office (Art. 24 PatA) to bring the wording of the claim in line with the decision of the German Supreme Court. This would also constitute a new fact and the patentee / plaintiff should be allowed to present new facts in support of validity and infringement of the limited claim (like in the corresponding proceedings in Germany, see above). Note, however, that the limitation had not yet been published at the date of the hearing, and the FPC apparently dismissed a request of the patentee to postpone the hearing until publication of the limitation.

With respect to the second and the third patent in suit, the plaintiff argued that the preliminary assessment of the reporting judge and the decision 4 Ni 20/11 (EP) of the German Federal Patent Court constitute nova according to Art. 229(1) CPC, and that it should likewise be allowed to present new facts in support of validity and infringement of correspondingly limited claims that address these newly raised issues.

In sum, this boils down to three scenarios of limitations to a patent claim / request for injunctive relief: Is it allowed to present new facts in support of a limited claim / request, when the limitation is occasioned by: –

  1. … a corresponding decision in another country?
  2. … a statement in the preliminary assessment of the reporting judge?
  3. … a partial surrender of the patent?

ii)  Limitation under Art. 24 lit. c / partial invalidity

The patentee / plaintiff asserted that the patents in suit are valid and infringed on the basis of independent patent claims that were to be limited by incorporation of features taken from the description (i.e., not a combination of an independent claim with a dependent claim).

In the present proceedings, the defendant did not lodge a counterclaim for nullity but rather argued for nullity as a mere plea in defense. Apparently, the FPC had indicated to the parties in writing beforehand that it is doubtful whether it is possible at all to limit a claim on the basis of a feature taken from the description vis-à-vis the FPC, or if this shall only be possible when a counterclaim for nullity had been lodged (see Art. 27 PatA). E. Brunner in Der Patentverletzungsprozess (SMI 1994, p 127) favours the latter. Even though the plaintiff / patentee fiercely rebutted this view, the prior information from the FPC had prompted the plaintiff / patentee to declare the partial surrender of the patents vis-à-vis the patent office before the hearing. The partial surrender had not yet been officially published when the hearing took place, but had already been approved by the patent office.

A decision of the FPC on these highly interesting points of law would definitely make a good read. However, the parties finally entered into settlement negotiations and it remains to be seen if a decision will be issued at all.

Reported by Susanna RUDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2012_016 ¦ Main Hearing of 03 December 2014

Erowa AG ./. ProGrit GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President; Judge)
  • Dr. Tobias BREMI (Judge)
  • Dr. Kurt SUTTER (Reporting Judge)
  • Esther SCHEITLIN (Court Clerk)

Representative(s) of Plaintiff:

  • Dr. Thierry CALAME (Lenz & Staehelin)
  • René RUF (Rottmann, Zimmermann + Partner), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Mark SCHWEIZER (MLL)
  • Dr. Reinhard OERTLI (MLL)
  • Willi LUCHS (Luchs & Partner), assisting in patent matters

O2012_036: Main hearing of 17. January 2014

Case No. O2012_036 ¦ Main hearing of 17 January 2014

An order on information and accounting was granted in this matter in February 2013; please have a look at the earlier post with details about the subject-matter at stake. At the main hearing of 17 January, the defendant struggled heavily with his obligation on information and accounting pertaining to the actual number of infringing devices. Plaintiff estimated the value in dispute to CHF 25’000,–. Finally, the parties entered into (non-public) settlement discussions.

Reported by Martin WILMING and Oliver JEKER

BIBLIOGRAPHY

Case No. O2012_036 ¦ Main hearing of 17 January 2014

WorldConnect AG ./. Pearl Schweiz GmbH

Subject(s):

  • Patent infringement
  • Compensation

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

The very first main hearing at a glance

Case No. O2012_030 ¦ Main Hearing of 17 September 2013

I have attended the main hearing in this matter today. Why, you ask? Well, this was the very first main hearing before the FPC at all. All theory is grey: Like many practitioners, I was eager to learn how this is handled by the FPC in practice. Now, how did it go?

1.  Procedural matters

The President introduced the parties (cf. Bibliography below). The patent-in-suit was not explicitly identified. However, from the subsequent discussion of the subject-matter at stake, one could easily figure this out. Expectedly, the President reminded the parties that the Board expects them to only present new facts and new evidence that indeed are (proper or improper) novae according to Art. 229 (1) CPC. No pleading was expected.

The parties made their opening submissions (Art. 228 CPC), incl. reply and rejoinder. It was clarified that no taking of evidence according to Art. 231 CPC was envisaged by the Board (even though the defendant stressed some of his offers of evidence again). Moreover, the parties informed the Board of their costs for legal representation and for their patent attorneys in an advisory capacity.

Next, the President reminded the parties of their mandatory right to be heard in a humorous way (cf. an earlier post in this respect, with further reference):

Nun also das Ping-Pong bis zur Bewusstlosigkeit: […]

However, the plaintiff chose to not even start that game.

The President then asked the parties whether they are interested to settle the case with a consent judgement. The Board would then come up with a proposal. The proceedings were interrupted for the parties to discuss internally. No audience was allowed subsequently. It remains to be seen whether the parties agree in a consent judgement or whether we will see a published decision.

2.  Subject-matter at stake

The patent-in-suit in this nullity case is EP 1 508 436. Within the group of companies of the patentee / defendant, a product according to the patent-in-suit is marketed under the tradename Corvum.

Initially, the patent was granted as EP 1 508 436 B1 by the EPO without any material objections during prosecution. The search report only classified documents D1D2D3D4 and D5 as belonging to the technological background (“A”). See the EPO file wrapper (6.2 Mb) and the European Patent Register for further details of the prosecution history.

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

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

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

Patentee / defendant left this independent claim untouched in centralized limitation proceedings with the EPO. Rather, only dependent claim 16 and a corresponding part of the description was deleted; cf. EP 1 508 436 B1 with tracked changes. This deleted dependent claim related to embodiments wherein the adhesive coating (2) has a non-adhesive central strip. Patentee / defendant argued that the person of routine skill in the art would understand claim 1 now such that the adhesive coating is devoid of a non-adhesive central strip, in order to distinguish the claimed invention from the prior art.

From the oral submissions, I assume that the patentee / defendant requests maintenance of the patent roughly as follows:

  1. Claim 1 of EP 1 508 436 B3, but further limited by the intended purpose for use in house building and the feature that the tape is rolled-up to form a roll of adhesive tape.
  2. Eventualiter:
    Similar to (1.), but reformulated as a use claim.
  3. Subeventualiter:
    Similar to (1.), but with a further disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip.
  4. Subsubeventualiter:
    Similar to (2.), but with a further disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip.

It is my understanding that the patentee / defendant had presented the additional disclaimer in order to overcome issues raised in the assessment of the reporting judge. The parties expressed different views on allowability of the disclaimer, in view of the decisions G1/03, G2/03 and G2/10 of the Enlarged Board of Appeal of the EPO.

There are quite some interesting legal questions involved in this interplay of centralized EPO limitation and allowability of the additional disclaimer. I am looking forward to discuss these in more detail on the basis of the decision being published (if any).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_030 ¦ Main Hearing of 17 September 2013

Targo Specialty Products AG ./. Silu Verwaltung AG

Subject(s):

  • Nullity

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

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