Novartis’ pre-filled syringe patents for Lucentis™ under attack 💉

Reading time: 4 minutes
DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of Bioeq.

Case No. O2022_004 | Hearing of 21 November 2023 | ‘Ranibizumab PFS

Bioeq logo

This is litigation between Bioeq and Novartis about (in)validity of five patents relating to Novartis’ Lucentis® (ranibizumab) in a pre-filled syringe (PFS; see Compendium), for direct application into the eye of a patient. Ranibizumab is designed to block the vascular endothelial growth factor (VEGF) that can build up in the eye. This may help reduce unhealthy swelling, leaking, and growth of blood vessels.

Lucentis PFS

Bioeq seeks invalidation of CH 706 741 B1, EP(CH) 2 869 813 B1, EP(CH) 3 381 444 B1, EP(CH) 3 685 826 B1 and EP(CH) 3 656 373 B1 for insufficiency of disclosure, unallowable amendments and obviousness in view of, inter alia, the EYLEA briefing package for the Division of Transplant an Ophtalmology Products Advisory Committee Meeting (DTOP), WO 2007/035621 A1, the MACUGEN® – Full Prescribing Information, Reuter et al., Lankers and Fries.

Novartis logo

Novartis seeks maintenance of the patents in limited form. In its reply, Novartis requested that the proceedings in relation to EP(CH) 2 869 813 B1 be dismissed as moot due to revocation at the EPO. Further, Novartis had submitted new auxiliary claim sets with the rejoinder.

The pleadings were lengthy. My favourite terms from the pleadings are ‘Sammelsurium’ (mingle-mangle) of features, and ‘Taschenspielertrick’ (parlor trick). Let’s see whether they will make it into judgment. I had to leave at 2:00 pm when both sides had only finished their first pleadings.

Over the years, I have witnessed many a haggle over the duration of breaks. This hearing was no exception. Novartis asked for 30 minutes, but was given only 20 minutes after Bioeq’s first pleadings. I was all the more surprised that the President imposed a break of 30 minutes, even though Bioeq had requested only 10 minutes after the 2.5 h pleadings of Novartis. Someone needed a break, I guess … 😉

The oral proceedings were closed at about 4:00 pm. The President informed the parties that the judgment cannot be expected until next year.

✍ MW

BIBLIOGRAPHY

Case No. O2022_004 | Hearing of 21 November 2023 | ‘Ranibizumab PFS’

Bioeq AG
./.
Novartis AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Diego VERGANI

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Bioeq:

Representative(s) of Novartis:

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

PUBLICATION ON

ANNOUNCEMENT

PATENTS IN SUIT

CH 706 741 B1:

🔗 Swissreg

EP 2 869 813 B1:

🔗 EPO Register | Swissreg

EP 3 381 444 B1:

🔗 EPO Register | Swissreg

EP 3 685 826 B1:

🔗 EPO Register | Swissreg

EP 3 656 373 B1:

🔗 EPO Register | Swissreg

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Deferasirox not only chelates iron, but also the scope of numerical ranges

Reading time: 6 minutes

Case No. 4A_273/2023 (SC) | Judgment of 25 September 2023
on appeal against
Case No. O2021_004/5 (FPC) | Judgment of 20 April 2023 | ‘Deferasirox’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of Mepha.
deferasirox

This case is about deferasirox, an iron chelating agent. It is mainly used to reduce iron overload in patients who are receiving long-term blood transfusions in the treatment of chronic anemias.

The FPC has been busy with deferasirox since early 2021 in litigation between Novartis and Mepha. The crucial feature in terms of infringement was the amount of deferasirox. In short, the independent claims of both patents, EP 202 and EP 018, require 45-60% by weight of deferasirox. The attacked embodiment contained 64.3% by weight.

Now, is that an infringement?

It’s apparently been a tricky thing for the FPC:

    • On request of Novartis, a PI had been issued by the FPC with judgment of 15 December 2021, in view of an infringement under the DoE; see this Blog here.
    • In main proceedings, the outcome was different. With judgment of 20 April 2023, the FPC (with an enlarged panel of five judges) ruled that there was no infringement under the DoE. See this Blog here.

Novartis appealed, and the Supreme Court meanwhile affirmed the FPC’s finding of non-infringement under the DoE.

What the supreme court said

The FPC had answered the first and the second question of the three prong questionnaire in favor of Novartis. Not so for the third question with respect to ‘equal value’. Accordingly, Novartis’ whole appeal was only about the FPC’s assessment of the third question:

First, the Supreme Court summarizes what the FPC had held: The disclosure of a preferred value in conjunction with a claim that spells out a numerical range that comprises this preferred value is legitimately understood by the skilled person as a waiver of the patentee for values outside of the claimed range:

The Supreme Court has no issues with this assessment. On the contrary (my translation; emphasis added):

[T]the appellant does not explain the purpose of the precisely defined numerical range in the claim, which comprises the preferred value in the description, other than a waiver of values outside the exact range. If the patent proprietor does not wish to be limited to such a range and does not wish to exclude general tolerances beyond this, it is up to it to formulate its claim accordingly. The appellant is responsible for the fact that it did not define a broader or openly phrased numerical range in the claim without providing clear indications that the range could be exceeded.

Putting it differently later, the Supreme Court held (again, my translation; emphasis added):

It cannot be inferred from [the patents in suit] that compliance with the specifically claimed numerical values is not important. In this respect, the assessment of the lower court is in line with BGE 143 III 666, r 5.5.3, where it is stated that the limitation of the scope of protection to the literal embodiments is justified insofar as the third party skilled in the art may understand the patent in such a way that the proprietor has excluded protection for the equivalent embodiments. Whoever expresses his intention expressly or implicitly must be bound by the meaning of his conduct which the addressee may in good faith attribute to this expression.

In my reading, this puts an end to any discussion of infringement under the DoE in the standard cases of a numerical range in the claim and examples within that range in the spec. It remains to be seen whether (or not) specific examples outside of the claimed range, or other strong indications that the invention also works outside of the claimed range, would actually be helpful. I have my doubts. I feel that this might probably even underline the intention of precisely the narrowly claimed range. We shall see. Someone will surely test this out, sooner or later.

what the supreme court did _not_ say

The FPC had tried to get clarification from the SC with respect to Q2 (‘accessibility’), too:

However, the SC did not jump on it in the case at hand. Novartis’ appeal only pertained to Q3 (‘equal value’), and the SC could decide on the appeal without the need to dive into the ‘accessibility’ discussion.

We will thus have to live with Q2 as it stands for a little longer. But clarification is clearly needed. To me, the current assessment of Q2 in retrospect is devoid of any meaning. I stand to be proven wrong, but I believe it is a bogus question that will hardly ever be answered in the negative.

✍ MW

BIBLIOGRAPHY

Case No. 4A_273/2023 (SC) | Judgment of 25 September 2023
on appeal against
Case No. O2021_004/5 (FPC) | Judgment of 20 April 2023 | ‘Deferasirox’

Novartis AG
[Appellant / Plaintiff]
./.
Mepha Pharma AG
[Respondent / Defendant]

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    • Dr. Matthias LEEMANN

Representative(s) of Appellant / Plaintiff:

Representative(s) of Respodent / Defendant:

SUPREME COURT JUDGMENT
→ Appeal dismissed
Case no.: 4A_273/2023
Judgment of: 25 September 2023

PATENT COURT JUDGMENT
→ Main proceedings: No infringment under the DoE
Case no.: O2021_004 / O2021_005
Judgment of: 20 April 2023

PATENT COURT PI
→ Summary proceedings: Infringment under the DoE
Case no.: S2021_005
Judgment of: 15 December 2021

PATENTS IN SUIT

EP 2 964 202 B1:

See EPO Register and Swissreg for bibliographic details.

EP 2 964 202 B2:

See EPO Register and Swissreg for further information.

EP 3 124 018 B1:

See EPO Register and Swissreg for further information.

EP 3 124 018 B2:

Not yet available. But the OD has already issued the new DREX:

See EPO Register and Swissreg for further information.

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What 🍐 vs 🍏 will be cited for? I think it’ll be this: «Das ist, mit Verlaub, Unsinn.»

Est'd reading time: 8 mins

Case No. O2020_014 | Judgment of 2 October 2023 | ‘iMessage’ | not yet final

Apple logo

Rome wasn’t built in a day. But here it is, finally: The judgment in the case that was the longest pending in the last Annual Report of the FPC. It is an infringement case between Pear and Apple about a feature of Apple’s iMessage service that began in 2020; see this Blog here for some background information. Both patents in suit have lapsed already; EP 1 838 074 B1 and EP 1 208 687 B1. It’s all about damages for past infringement, if any.

iMessage icon

Putting it simple, the patents relate to methods for the transmission of information from one mobile phone to another, wherein e.g. an emoji is not transmitted as such between the two devices, but rather as a sequence of signs (e.g. as a descriptive word); see claim 1 of EP 687 and claim 1 of EP 074. The respective emoji associated with the sequence of signs is read out from a local memory at the receiving mobile phone, thereby eliminating the need for actually transmitting the more extensive image data via the mobile network.

Even though the whole thing was only about damages, Apple took this very seriously. Hey, iMessage was at stake! Apple took up the fight, and they did it the Draghi way. Both sides did.

Here’s a simplified timeline of the proceedings (🍐 Pear, Apple, ⚖️ Court; be prepared for some scrolling):

23 Sep 2020:

🍐 Statement of Claim (73 pages)

8 Feb 2021:

Statement of Defense (216 pages)

12 Apr 2021:

⚖️ Instruction Hearing at the FPC (no settlement reached)

14 Jul 2021:

🍐 Reply (376 pages)

2 Sep 2021:

Rejoinder («non-final»)

4 Oct 2021:

Rejoinder (re req. 1-49 and 52-54, w request for protective measures)

22 Oct 2021:

⚖️ Order of the FPC (admission of req. 50-51, unpublished)

4 Nov 2021:

Appeal to SC (re order of 22 Oct 2021)

5 Nov 2021:

⚖️ Order of the SC (no suspensive effect)

17 Nov 2021:

Giving reasons for requested protective measures

24 Nov 2021:

Rejoinder (re req. 50-51)

1 Dec 2021:

⚖️ Judgment of the SC (appeal not taken into consideration, see here)

20 Dec 2022:

🍐 Comments (re protective measures)

4 Jan 2022:

⚖️ Order of the FPC (re protective measures; see here)

24 Jan 2022:

🍐 Comments (on new factual allegations in the rejoinder of 4 Oct 2021 and 24 Nov 2021)

25 Jan 2022:

Comments (request to disregard plaintiff's submission of 24 Jan 2022)

6 Jul 2022:

⚖️ Main hearing (cancelled)

9 Jan 2023:

⚖️ Technical opinion of the judge-rapporteur

21 Feb 2023:

Comments on TO

23 Feb 2023:

🍐 Comments on TO

12 Jun 2023:

⚖️ Main hearing at the FPC

2 Oct 2023:

⚖️ Judgment of the FPC

Nov 2023:

🍐 Appeal to the SC?

On the merits

One could expect a judgment of Arnoldian length. And it indeed is, at least at the face of it. I didn’t check, but it is quite likely the longest judgment of the FPC by now: 163 pages. However, the closer you look, the more the judgment shrinks to more digestible dimension; 90+ pages are eaten up by Pear’s requests from the reply (pages 6-59) and five inter partes limited versions of EP 074 in the annex (pages 124-163; AR1 to AR5).

On the merits, there is not much to say, really. It’s a pretty straight forward assessment of added matter in the first place; see ¶¶31-50 on pages 79-94: Both EP 687 as granted and EP 074 (as granted and AR1 to AR5) failed for this reason alone. Flogging a dead horse, still further grounds for nullity are assessed in depth in the judgment:

Re novelty (¶¶55-59 on pages 98-103), the outcome is mixed: All independent claims of EP 074 (claims 1, 20 and 25) as granted and according to AR1 are anticipated by US 981. On the other hand, novelty of AR2 to AR5 is acknowledged. Likewise, novelty of all independent claims of EP 687 is acknowledged.

The judgment goes on to establish various lines of obviousness for both patents; ¶¶60-73 on pages 103-118. 

In a nutshell, Pear’s complaint was dismissed (invalidity of both patents in suit; infringment not assessed). The judgment is not (yet) final / still open for appeal to the Supreme Court.

The court was not amused, I’d say

There are some hidden gems in the judgment that make pretty clear: The court was not amused. For instance, the main hearing could not be held as planned because the technical opinion of the judge-rapporteur could not be established sufficiently in advance. Why? Because of the party submissions of absurd length:

Further, it was not appreciated that the technical competence of the judge-rapporteur was only put in question after receipt of the technical opinion:

The judgment holds that this is opportunistic and belated in any event:

Still, the court assessed the technical complexity of the matter at hand. It makes me smirk to read that this technology (illustrated with the figure below) is quite understandable for a physical chemist with a doctorate. The complexity was more on the procedural side because both sides did everything to inflate things:

And, finally, this is definitely not how one wishes an argument to be perceived by a court:

Costs

The chapter on costs is noteworthy; ¶¶75-77 on pages 119-121. In the statement of claim, Pear had assumed the value in dispute as kCHF 250. In turn, Apple held in the statement of defense that this was much too low — and assumed CHF 5m. Apparently, Pear did not object in the reply but rather held:

It is not surprising that the defendant concedes that the amount in dispute is too low.

No wonder that the FPC assumed 5m as the value in dispute.

Given the outcome of the proceedings, that’s quite costly for Pear: The court fee is set at kCHF 100. In addition, Pear has to pay a compensation to Apple for legal representation (kCHF 100) and necessary expenses for the assistance of patent attorneys (yet another kCHF 100).

Presumptions re obviousness

I feel there’s a new paragraph in the presumptions on obviousness:

Presumptions are here to stay. Thus, it’s worth having a closer look. The first sentence is pretty straight forward. Fn 43 (erroneously) refers to the EPO Guidelines G-V, 5.1 (there is no G-V, 5.1). Clearly, G-VII, 5.1 is meant:

The closest prior art is that which in one single reference discloses the combination of features which constitutes the most promising starting point for a development leading to the invention.

I agree.

The second sentence of the new paragraph addresses prior art documents that contain several (discrete) embodiments. In my mind, this is inspired by the scissor catalogue situation of T 305/87 (without mentioning the decision, though). That decision was about novelty. And about a document that essentially consisted of discrete embodiments only (various scissors in a catalogue). The gist is that one cannot just pick and choose features from two distinct embodiments, scramble them together and then argue for lack of novelty. That’s common sense, I’d say.

But I wonder whether it is universally true to say that, whenever there are two or more discrete embodiments (in whatever document), only one single embodiment in isolation is a specific combination of features. That may be true for a scissor catalogue. Not so much for, e.g., a typical patent document. I believe that one has to read/understand specific embodiments of, e.g., a patent document in the context of the whole disclosure of the document. In the assessment of novelty, it is commonly accepted (I think) that the disclosure of a specific embodiment in a patent document may well be supplemented with features from the general specification, provided that the embodiment is representative of the general technical teaching of that document. Importantly, it suffices for such a combination being permissible that there are no reasons which would prevent a skilled person from such a combination. An explicit pointer for such a combination is not necessary. See e.g. T 332/87, r. 2.4 (also cited in the Case Law book in chapter I.C.4.2, 5th para.)

The same standard of disclosure should be applied when defining the specific set of features that is taken as the closest prior art in the problem-solution approach. (Else, we were in real trouble.)

Which brings me to the last sentence of the new paragraph. (Btw, the fn after the last sentence refers to O2017_007, r. 65 f. Don’t look there; it’s r. 54.) It uses the common terms directly and unambiguously — which are non-controversial per se. But I think it is important to keep in mind what that means in the context of specific embodiments in, e.g., patent documents: The general specification may well be used to supplement an embodiment with additional features taken from the general specification, provided that the embodiment is representative of the general teaching of the document. That’s sufficient to establish a direct and unambiguous dicslosure of the combination of features.

It will be interesting to see how the FPC actually applies this new paragraph in the presumptions on obviousness. It’s been uncritical in the case at hand.

✍ MW

PUBLICATION ON

BIBLIOGRAPHY

Case No. O2020_014 | Judgment of 2 October 2023 | ‘iMessage’ | not yet final

Pear AG
./.
(1)
(2)
(3)
Apple Inc.
Apple Distribution International Ltd
Apple Retail Switzerland GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Peter RIGLING

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

JUDGMENT

PATENTS IN SUIT

EP 1 838 074 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

EP 1 208 687 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

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You recognize a tourbillon when you see it? Think twice.

Reading time: 4 minutes

Case Nos. O2021_008, O2021_016 | Hearing of 31 May 2023 | ‘Escape II’

This litigation between Greubel Forsey and Purnell is about a very special kind of wrist watch. In a nutshell, it’s about a timepiece movement with not just one but at least two tourbillons, each having a cage carrying an escapement and a balance. The trick is that the cages are driven at least indirectly in rotation by a differential gearing (31); see independent claim 1 of the patent in suit (EP 1 706 796 B1). If you are into mechanical watches, you will get the gist from this illustration:

EP 1 706 796 B1, Fig. 1

The attacked embodiment is Purnell’s calibre P03. This movement is e.g. used in Purnell’s watches of the Escape II series. It’s pretty impressive to see this movement with the dancing sphericals in action. Looking more closely at just one of the two sphericals (source: Purnell; see here):

Greubel Forsey sought injunctive relief, and Purnell counter-sued for invalidity (which is why there are two file numbers).

There was some discussion at the main hearing whether the two sphericals in the attacked embodiments are, in fact, tourbillons as required by EP 796. Purnell argued they were just spherions. Indeed, we understand from e.g. this website, that both spherions together constitute a single tourbillon:

[…] Escape II verfügte über zwei kugelförmige Vorrichtungen in der unteren Hälfte des Zifferblatts, die sich zu einem einzigen Tourbillon verbinden. [Escape II] verfügt über eine sogenannte Potter-Hemmung, bei der sich die Unruh in einem Käfig und die Hemmung im anderen befindet.

On the (in)validity side, Purnell argued that if a very broad interpretation of the term tourbillon was applied, as had been done by the judge-rapporteur, then an equally broad interpretation should be used in the assessment of the prior art. EP 796 was then invalid in view of certain prior art disclosing an escapement. In turn, Greubel held:

Purnell seems to forget, whether intentionally or not, that a specific disclosure is not anticipated by a more general disclosure.

You know the genus/species rules of the game, right? See e.g. here.

Deliberation

We concluded from the main hearing that the judge-rapporteur had sided with the plaintiff and confirmed (at least) the validity of EP 796.

The main hearing took place already on 31 May 2023. Nothing has surfaced since then, i.e. for almost 4.5 months. Such a long time is pretty unusual, at least when the patent is still in force and the allegedly infringing items are still available on the market. Maybe, the parties have settled(?). Or are the judges still deliberating? We cannot know. Stay tuned.

✍ Hannah COLES and Martin WILMING

BIBLIOGRAPHY

Case Nos. O2021_008, O2021_016 | Hearing of 31 May 2023 | ‘Escape II’

Greubel Forsey SA
./.
Purnell SA

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Frank SCHNYDER

Judge-rapporteur:

    • Frank SCHNYDER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Laurent MUHLSTEIN (Junod)
    • Michael BURNS (e-Patent), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

PATENT IN SUIT

See EPO Register and Swissreg for further information.

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Laboratory ceilings: Geometry is (not) just plane fun

Reading time: 2 minutes
DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.

Case No. O2021_018 | Judgment of 31 August 2023 | ‘Laboratory ceiling’ | Appeal pending

Lüdi logo

This infringement case relates to laboratory ceilings for routing supply lines for certain media and air in laboratories. The patent in suit is EP 1 934 414 B1 of H. Lüdi + Co.

Wobatech logo

The judgment holds that the attacked embodiment of Wobatech does not read on EP 414 because the air supply duct is not substantially flush with the underside of the support frame in the [first] plane of the support frame. The case was accordingly dismissed for non-infringement. The judgment does not elaborate on Wobatech’s nullity plea in defense.

The judgment is not yet final.

✍ MW

BIBLIOGRAPHY

Case No. O2021_018 | Judgment of 31 August 2023 | ‘Laboratory ceiling’ | Appeal pending

H. Lüdi + Co. AG
./.
Wobatech AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • André WERNER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

PUBLICATION ON

JUDGMENT

PATENT IN SUIT

See EPO Register and Swissreg for further information.

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Infringement under the Doctrine of Equivalents: There is life in Q3

Reading time: 13 minutes
DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of Mepha Pharma AG.

Case Nos. O2021_004, O2021_005 | Judgment of 20 April 2023 | ‘Deferasirox II’

HEADNOTES

Art. 229 para. 1 CPC
Proper nova
The decision of a Board of Appeal of the European Patent Office which also concerns the patent in suit is a genuinely novel fact within the meaning of Art. 229 (1) (a) of the Code of Civil Procedure.

Art. 8 CC, Art. 1 para. 2 PatA, Art. 56 EPC
Burden of proof
The burden of proving the technical effect(s) of the invention lies with the patent proprietor.

Art. 51 PatA, Art. 66 let. a PatA, Art. 69 EPC
Infringement by equivalent means
If a preferred value is mentioned in the patent and a range is claimed in the claim that includes this value, the skilled person assumes that the patent proprietor has waived protection for values outside the claimed range.

This judgment in litigation between Mepha and Novartis covers both Mepha’s revocation action with respect to EP 202 and EP 018 (O2021_004) and Novartis’ conterclaim for infringement of both patents (O2021_005) by Deferasirox-Mepha® (Swiss market authorization no. 67678).

Fe(III) chelate

Deferasirox is an iron chelating agent; it is frequently referred to simply as DFX. It is mainly used to reduce iron overload in patients who are receiving long-term blood transfusions in the treatment of chronic anemias.

The FPC had issued a PI in summary proceedings in December 2021; see this Blog here. This finding has been reversed with the present landmark ruling in main proceedings, by an enlarged panel of five judges: The judgment holds that both patents are not infringed, neither literally nor under the DoE. This is what hn ③ is all about.

But let’s take it one step at a time, walking through all headnotes.

Board of appeal decision is proper novuM

Hn ① relates to a procedural matter:

Novartis logo

Let me put this into context first. In litigation at the FPC, parties have two unrestricted opportunities to comment on the merits of the case and, in particular, to introduce new facts into the proceedings. Thereafter, new facts and evidence (nova) can only be introduced under the limited conditions of Art. 229 CPC.

According to the Supreme Court (BGE 146 III 416, r. 4.1; see this Blog here), filing of a new claim set is to be treated in the same way as the submission of other nova. In the underlying case of this Supreme Court judgment, the patentee had partially waived the patent in ex parte proceedings at the Swiss IPI (Art. 24 PatA, comparable to limitation proceedings under Art. 105a EPC at the EPO) only after the closure of the file in co-pending litigation, and was barred from introducing the limited claims into the civil proceedings. The Supreme Court considered the limited claims as an improper novum under Art. 229 para. 1 let. b CPC: Even though the limited claims came into existence only after closure of the file, they could have come into existence earlier, only depending on the decision of the patentee with respect to both timing and extent of the partial waiver.

The present judgment holds that the situation in inter partes opposition / appeal proceedings at the EPO is different. First of all, such proceedings are not initated by the patentee. Second, and even though it is the patentee who formulates the wording of all his auxiliary requests, it is difficult for him to predict which of the auxiliary requests (if any) will survive examination on the merits. Finally, the timing of such inter partes proceedings is determined to large extent by the conduct of the other parties and the procedural calendar of the Board of Appeal. In sum, the FPC holds that the patentee is completely deprived of control over the time and at least partially deprived of control over the version in which the patent is maintained.

Mepha logo

Accordingly, the FPC held that the Board of Appeal decision T 1057/21 to maintain EP 018 in amended form is to be considered as a proper novum under Art. 229 para. 1 let. a CPC.

Let’s have a closer look at T 1057/21. EP 018 was maintained based on auxiliary request #48(!) of 71 auxiliary requests in total. Auxiliary request #48 had been initially filed as auxiliary request #38 in first instance proceedings on 19 February 2021, more than a year before closure of the file in nullity proceedings O2021_004. Patentee re-shuffled his requests later, i.e. the Board of Appeal did not deal with 47 requests before it finally allowed auxiliary request #48. Rather, the patentee made this request his new main request in the oral proceedings before the Boards of Appeal on his own volition, and this new main request was found allowable.

Undoubtedly, it is an uncomfortable situation for patentees to coordinate national nullity proceedings (governed by the strict rules on nova after closure of the file under the CPC) with co-pending central opposition / appeal proceedings at the EPO. Which is why some countries rule out national nullity proceedings while EPO opposition / appeal proceedings are still pending (e.g. Germany; see § 81(2) PatA); not so in Switzerland. The FPC’s approach will surely be appreciated by patentees, if and when it is ultimately approved by the Supreme Court.

burden of proof for technical effects

Hn ② relates to the allocation of the burden of proof for the technical effect(s) of the invention. Now we know:

On a quick read, the hn might suggest that it is up to the patentee to actually prove the technical effect, while the plaintiff in invalidity proceedings can sit back and just grouse that the claimed technical effect has not been proven (yet). But beware: The hn only deals with the allocation of the burden of proof.  It does not say anything about the standard of evidence according to the lex fori. The regular standard of ‘full conviction’ applies in Switzerland, which according to settled case law means that the court should have no serious doubts about the existence of the alleged fact, or that remaining doubts appear to be slight.

Now, what does that mean for assessment of an alleged technical effect of an invention?

The proof does not necessarily have to be provided with empirical data or even clinical studies. If the person skilled in the art can conclude on the basis of scientific or theoretical considerations that the claimed technical effect exists, this is sufficient proof. When assessing the evidence, it may also be taken into account which indications speak against the claimed technical effect. If there are no such indications, the requirements for proving the technical effect are lower.

Tango
it takes two …

Not much of a surprise, isn’t it? In practice, it takes two to tango: The more indications are on the table that the effect is not achieved, the harder it will be for the patentee to actually prove the contrary. Even though the burden of proof lies with the patentee in the first place (which is also the case at the EPO, see e.g. T 1188/00 (hn) and G 2/21 (r. 26)), the whole discussion about whether or not a certain technical effect is achieved is an argumentative arm wrestling.

Numerical ranges / infringemement under the DOE

The judgment holds that both EP 202 and EP 018 as amended in opposition/appeal proceedings are valid (r. 46-67) but not infringed, neither literally nor under the DoE.

The decisive feature in terms of infringement is the amount of deferasirox. The independent claims of both patents require 45-60% by weight of deferasirox. The attacked embodiment contained 64.3% by weight, based on the information given in the product information; r. 68. Even the lowest (disputed) analytical value submitted by the patentee was 60.8%. The judgment holds that even in case of the lower value literal infringement is ruled out. The skilled person will typically consider numerical ranges as more precise and more clear than other verbally described technical claim features (in line with the judgments X ZR 168/00Schneidmesser I (r. II 3 lit. d) and X ZR 135/01Schneidmesser II (r. 4 lit. d) of the German Supreme Court). Accordingly, also values within usual tolerances are not literally covered. The skilled person knows, however, that technical numerical ranges are subject to a measuring error. Therefore, as a rule, the last digit of numerical values corresponds to the measurement accuracy. If no other error limits are indicated (as is the case here), the maximum error for the last digit is estimated from the rounding convention; see e.g. T 175/97 (r. 2.6). The judgment holds that this case law developed for prior art disclosures equally applies to the interpretation of numerical ranges in patent claims. Since the claimed range is given without any decimal digits, the range that is still within the literal scope of protection is ≥44.5% to <60.5% if the normal rounding convention is applied.

Accordingly, and in particular in the absence of any teaching in the patents that would point to a broader interpretation of the claimed range, the judgment holds that neither 64.3% nor 60.8% is literally covered by the claims.

Turning to infringement under the DoE (r. 73 et seqq.), the judgment holds that the variant has the same effect; i.e., Q1 of the three prong test is answered in the affirmative (not much out of the ordinary for generics).

As to the second question re accessibility of the variant (‘Auffindbarkeit’), the judgment holds that there is currently some uncertainty as to whether this should be dealt with in retrospect (i.e., in knowledge of the variant like in the U.K.), or not (like in Germany); r. 77. It is hoped that the Supreme Court clarifies its position when it gets the chance (which is now):

In the case at hand, the FPC held that it does not matter: The same effect of the variant was ‘accessible’ without involvement of an inventive step in any event; r. 78. Thus, Q2 is answered in the affirmative.

Q3 is meant to safeguard the legitimate interest of the public in legal certainty. Here it is (my own understanding / translation):

Does an objective reading of the patent specification lead the skilled person to the conclusion that the patentee has formulated the claim — for whatever reason — so narrowly that he does not claim protection for an embodiment of same effect (Q1) that is ‘accessible’ for the skilled person (Q2)?

The single embodiment of both patents makes use of 56% of deferasirox (para. [0016] von EP 202; para. [0017] von EP 018). In the claims, however, not this specific value is mentioned, but rather a range of 45% to 60%, which is evidently placed around this specific value. Under these circumstances, the judgment holds (r. 80) that the skilled person assumes that the patentee has specifically and bindingly placed the claimed range around the specific value, i.e. the patentee has deliberately decided to specify the invention to be within this range and thus to dispense with the scope of protection lying outside this range. Under the circumstance, the judgment holds that there is no room to extend this range under the DoE by taking into account generally accepted tolerances going beyond it, because the skilled person may in good faith assume that the patentee has already taken into account possible tolerances when defining the range. In passing, the judgment notes that the range is not symmetrically placed around the specific value; it rather is narrower above than below the specific value. This even underlines the importance of the upper limit. Thus, infringement under the DoE was denied.

This outcome is essentially in line with the U.K. judgment [2022] EWHC 2847 (Pat), para. 232 (emphasis added):

I have found that in the present case the inventive concept of the Patents would be seen by the skilled team as requiring strict compliance with the 45-60% range of deferasirox. On that basis a variant will not be substantially the same as the inventive concept unless it strictly complies. I need not investigate with precision what compliance means numerically as matter of general principle. In my judgment Teva DFX does not comply.

In the Swiss case, Novartis appealed to the Supreme Court. The appeal is still pending at the time of writing.

In accordance with the outcome in main proceedings, the PI was lifted with separate order.

UPDATE 28 Sept. 2023: Novartis’ appeal has been dismissed by the Supreme Court; the decision is final.

✍ MW

BIBLIOGRAPHY

Case Nos. O2021_004, O2021_005 | Judgment of 20 April 2023 | ‘Deferasirox II’

Mepha Pharma AG
./.
Novartis AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Rudolf RENTSCH
    • Prisca von BALLLMOOS
    • Marco ZARDI

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

JUDGMENT
of 20 April 2023 in main proceedings

ORDER
of 12 May 2023 rectifying / supplementing the judgment

JUDGMENT
of 15 December 2021 in summary proceedings

PATENTS IN SUIT

EP 2 964 202 B1:

See EPO Register and Swissreg for bibliographic details.

EP 2 964 202 B2:

See EPO Register and Swissreg for further information.

EP 3 124 018 B1:

See EPO Register and Swissreg for further information.

EP 3 124 018 B2:

Not yet available. Currently being dealt with by the OD again, after T 1057/21,  to compile the set of documents for maintenance of the patent in amended form, based on the following claims:

See EPO Register and Swissreg for further information.

EPO BOARD OF APPEAL DECISIONS

T 0526/21 re EP 202

T 1057/21 re EP 018

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Thou shalt not take photos or make recordings in the courtroom

Reading time: 3 minutes

Case No. O2022_003 | Hearing of 14 June 2023 | ‘Vertuo® / assignment action’

Nestlé and K-fee have currently locked jaws on various issues. First, K-fee asserts that Nestlé infringes on three patents with their Vertuo® pods, i.e.

See this Blog here for some background information. The FPC has dismissed this claim only recently; see here. (I will review this judgment in more detail on this Blog soon; stay tuned.) K-fee will likely appeal to the Supreme Court.

Separately, Nestlé has sued K-fee for assignment / unlawful usurpation of the very same patents. While the Swiss national validations of EP 362, EP 207 and EP 209 are the subject of proceedings at the Swiss FPC, the remainder of the pretty extensive patent family is being litigated at the Regional Court of Düsseldorf (Germany); see K-fee’s redacted Statement of Claim.

The hearing in the Swiss proceedings took place earlier this week, on June 14. I could not make it to the hearing, (un)fortunately. I’m currently on holiday with my three blondes … 😎. Which is why I cannot really report much about the current state of play. However, I have been told that a member of the public took pictures and made recordings during the hearing. Better don’t do this. It’s strictly prohibited; Art. 15 PR-PatC. (If you wish to make the argument that this prohibition does not apply because the hearing was not “in the rooms of the FPC”, go for it. I wouldn’t.) The President expelled the misbehaving person from the court room. To the best of my knowledge, it’s the first time that this happened.

Darn, something actually happens and I’m not there!

✍ MW

BIBLIOGRAPHY

Case No. O2022_003 | Hearing of 14 June 2023 | ‘Vertuo / assignment action’

Société des Produits Nestlé SA
./.
K-fee System GmbH

Panel of judges:

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

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

ANNOUNCEMENT

PATENTS IN SUIT

EP 3 023 362 B1:

EP 3 521 207 B1:

EP 3 521 209 B1:

STATEMENT OF CLAIM 

Assignment action in Germany

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Pear ./. Apple: A hefty dossier is coming to a close

Est'd reading time: 4 mins

Case No. 02020_014 | Hearing  of 12 June 2023 | ‘iMessage’

reappearing …

This case pops up every now and then. It is an infringement case between Pear and Apple about a feature of Apple’s iMessage service that began in 2020; see this Blog here for some background information. Of the currently pending cases at the FPC, this one has been pending the longest — but the end ist near. Both patents in suit have lapsed already; EP 1 838 074 B1 and EP 1 208 687 B1. It’s all about damages for past infringement, if any.

Putting it simple, the patents relate to methods for the transmission of information from one mobile phone to another, wherein e.g. an emoji is not transmitted as such between the two devices, but rather as a sequence of signs (e.g. as a descriptive word); see claim 1 of EP 687 and claim 1 of EP 074. The respective emoji associated with the word is read out from a local memory at the receiving mobile phone, thereby eliminating the need for actually transmitting the more extensive image data via the mobile network.

now, what?!

From the announcement of the hearing, one may catch a glimpse of Apple’s defense: Infringement is disputed (unsurprisingly), and nullity of both patents is asserted as a plea in defense. More specifically, Apple holds that the subject-matter of the independent claims is anticipated by at least US 5,805,981, EP 851 649 A2, WO 97/17681, WO 99/37105 and the Nokia 3210 manual. Obviousness in view of the GSM technical specification 03.38, the IBM Simon manual (touted as the world’s first smartphone) and US 5,784,001 are further lines of defense.

The patents in suit refer to a mobile telephone in the independent claims. Back in the days, at the end of the last century when the patents were filed, mobile phones looked a little different than nowadays. So, what about this disclosure in the prior art:

Does this disclose a mobile telephone? Not in Pear’s view.

At the hearing, both sides accused each other of inflating and dragging out the proceedings. In the rejoinder, Pear apparently defended EP 074 in no less than 50(!) limited versions, but focused only on five of them in their pleadings. Sounds like a hefty dossier, doesn’t it? We shall see how this will be dealt with in the final judgment.

The technical opinion of the judge-rapporteur has likely been unfavorable for Pear. How else could one explain that they called his technical expertise into question?

Needless to mention that no settlement was reached at the hearing. The judgment is unlikely to be handed down before the fall of this year.

✍ Christoph RENELT / Martin WILMING

BIBLIOGRAPHY

Case No. 02020_014 | Hearing  of 12 June 2023 | ‘iMessage’

Pear AG
./.
(1)
(2)
(3)
Apple Inc.
Apple Distribution International Ltd
Apple Retail Switzerland GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Peter RIGLING

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ANNOUNCEMENT

PATENTS IN SUIT

EP 1 838 074 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

EP 1 208 687 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

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A deux-pièces in disguise?

Reading time: 5 minutes

Case No. O2021_012 | Hearing of 8 May 2021 | ‘Apparateträger’

Agro logo

Agro and Morach-Technik are litigating about Morach’s UP-ISODOSE CRALLO®-TELE; here’s a flyer of this product. The hearing began with a very quick inspection of some samples of the attacked embodiments (defendant’s counsel emphasized their one-piece structure) and the following video:

YouTube player

The video apparently showcases certain prior art devices of the plaintiff.

The two patents asserted by Agro are CH 705 798 B1 and EP(CH) 2 597 216 B1. Claim 1 of the latter reads as follows (emphasis added):

A device carrier for fastening a device to a building wall, comprising: a base element (4) having a base surface (7) for fastening to the building wall and a device holder (6, 6′, 6″) for receiving a device having a front side (8) opposite the base surface (7), the device holder (6, 6′, 6″) being a device box for receiving an electrical device; characterized in that an at least two-part insulation is provided, which circumferentially surrounds the device carrier (1) between the base surface (7) and the front side (8); at least one first insulation part (2; 23) and a second insulation part (3; 24) being provided, which each have an inner contour corresponding at least to a portion of a circumferential contour of the device carrier (1); the inner contour bearing in a form-fitting manner against the base element (4) and against the device holder (6, 6′, 6″), and the first insulation part (2; 23) and the second insulation part (3; 24) bearing against one another in a form-fitting and adjoining manner.

The following figure from EP 216 shows how all this comes together:

one, or two …?

Interestingly, the pleadings did not address nullity of the patents in suit at all — even though the announcement of the hearing mentioned that Morach asserts that the subject-matter of the patents was obvious over the video embedded above in further view of WO 88/04388 A1 and DK 150 392 B).

On the infringment side, the parties apparently (only) dissent about whether the two half-shells of the insulation of the attacked embodiments that are permanently glued together in the final product still read on the provision of a two-part insulation as claimed. Agro’s counsel emphasized that the attacked embodiments do comprise an at least two-part form of the isolation. The mere fact that the two parts are glued together in the final product does not lead out of the scope of protection when the feature is properly construed in view of the specification, in particular para. [0023] of EP 216. This in particular holds true for the intermediate product before glueing. In any event, the attacked embodiment would infringe under the DoE.

On the other hand, defandant’s counsel held that the gist of the alleged invention is an insulation with two separate parts of the isolation in the final product since otherwise the device would not be adaptable to different needs (see e.g. para. [0008] of EP 216.

I cannot help but thinking of this famous quote of R. Buckminster FULLER (a little nerdy, I know):

Unity is plural and, at a minimum, is two.

(Here’s what Bucky meant by it.) Anyway. It all boils down to a single question, indeed: Does an insulation that is permanently glued together from two pieces read on the feature that an at least two-part insulation is provided?

I had made up my mind very quickly on this issue. Then changed it. Or didn’t I?

The expert-opinion of the judge-rapporteur held that there is no infringment, neither literally nor under the DoE.

The President asked the parties whether they would be interested in settlement talks. Both sides agreed. The court deliberated for about 15 minutes to come up with a (non-public) proposal. I cannot know what the parties did (or are still doing) with it.

✍ MW

BIBLIOGRAPHY

Case No. O2021_012 | Hearing of 8 May 2021 | ‘Apparateträger’

Agro AG
./.
Morach-Technik AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Werner ROSHARDT
    • Dr. Kurt SUTTER

Judge-rapporteur:

    • Werner ROSHARDT

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Dr. Demian STAUBER (Rentsch)
    • Lisa MARY (Rentsch)
    • Louis LAGLER (Rentsch), assisting in patent matters
    • Dr. Alena BACH (Rentsch), assisting in patent matters
    • Dr. Moritz HÖNIG (Rentsch), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

PATENTS IN SUIT

CH 705 798 B1:

See Swissreg for bibliographic details.

EP 2 597 216 B1:

See EPO Register and Swissreg for bibliographic details.

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K-fee ./. Nestlé Nespresso: Take-aways from the main hearing

Reading time: 7 minutes

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

WHAT YOU NEED TO KNOW

Judge-rapporteur’s expert opinion:
The Vertuo® pods feature a barcode, i.e. K-fee’s patents in suit are infringed. However, they are invalid.

A request for recusal of the judge-rapporteur was still pending at the date of the hearing.

K-fee System GmbH has sued Nestlé Nespresso SA for infringement of three European patents, i.e.

K-fee logo

The allegedly infringing items are Nespresso’s Vertuo® pods. Please see this Blog here for some further background information about the matter.

I have attended the main hearing on 22 March 2023 (apologies for the delayed report; it’s been pretty busy lately). The courtroom was packed: Nestlé appeared with seven people; but that was even topped by K-Fee’s team that was nine people strong.

Nespresso logo

In a nutshell, I understood from the pleadings that the expert opinion of the judge-rapporteur had some good news for both sides: The patents were infringed (i.e., the Vertuo pods indeed carry a barcode), but they are invalid (at least) in view of  WO 2010/026053 A1. Note that the summary judgment of non-infringement in co-pending U.S. proceedings held the exact opposite with respect to the Vertuo® code, i.e. that it is not a barcode but rather a bitcode.

This set the stage for the pleadings.

(In)Validity of the patents

K-Fee’s first pleadings mainly dealt with validity of the patents in suit. Novelty over WO 02/28241 A1 and EP 1 974 638 A1 was relatively quickly dealt with. EP 638 deals with color codes on coffee pods; but it holds in para. [0010] that colored barcodes are not meant thereby. At one point, the President wondered whether that, maybe, only meant that colored barcodes are not claimed — but they are nevertheless mentioned, explicitly. Nestlé did not cover novelty in their pleadings at all.

A clone of the He-Pod(?)

Obviousness was a bigger issue. K-Fee started off with an illustration of how far the various ‘closest’ prior art documents are away from the invention as claimed: A spiral galaxy with the invention as the host star, and with some prior art documents lightyears away. The EPO first instance bodies typically consider just a single prior art document as the ‘closest’ one. K-Fee held that this is not just because they were not in the mood of doing the whole exercise over and over again. (A smirk flitted across many faces.) Be that as it may, the analysis was in fact carried out from various ‘closest’ prior art documents. In particular, both sides set out their respective arguments for (non-)obviousness in view of WO 2010/026053 A1; and EP 512 468 A1  in further view of WO 02/28241 A1.

As to WO 053, a barcode is mentioned but its location on the pod is not specified. The judge-rapporteur apparently assumed that the barcode would have to be read out when the pod is enclosed in the brewing cage. K-fee disagreed. Further, the judge-rapporteur held that the barcode could only be put on the pod at very few locations when it has to be read out in the cage, and that the underside of the rim was the obvious one. Again, K-fee disagreed. I remain keen to see how this plays out.

With respect to EP 468 as closest prior art, I understood that Nestlé disagreed with the judge-rapporteur’s definition of the objective technical problem. Apparently, the dissent is inter alia about whether it matters that the objective technical problem is already foreshadowed in the closest prior art. Maybe, we will get this clarified now; see my thoughts on this issue here and here.

infringement: is it a barcode?

I understood from the pleadings that the judge-rapporter construed a barcode (roughly) as follows:

    1. it comprises bars and gaps; and
    2. it uses the width of the bars and gaps
    3. as an optically readable pattern for providing information.

The parties apparently agreed with this definition. But they have a totally different understanding of what it means. Nestlé held that they simply used 140 segments on the rim of the pod, each segment covering a fixed 2.57°. In Nestlé’s view, this code does not make use of ii), i.e. of (varying) width of bars and gaps. On the other hand, K-fee (and, in my understanding, also the judge-rapporteur) held that, at the face of it, any change of a segment would result in a change of the apparent width of a gap or a bar — which is all that is required by ii).

In any event, Nestlé held that the term ‘code’ means more than just a series of bars and gaps. At the face of it, this is just a pattern. It only becomes a code by way of a set of rules how to convert it to meaningful information. Nestlé further held that according to the CGK the absolute width of a bar in a barcode is irrelevant. The width of a bar only makes sense when interpreted in relation to the width of respective other bars of the barcode.

The President made an interesting remark at one point. He questioned both sides:

What if the parties agree on a certain claim construction that the court finds to be incorrect? Is the court bound by it?

I am not sure whether there is an easy answer. Maybe, it’s worth a headnote(?).

Request for Recusal

I understood from the pleadings that K-fee had requested recusal of the judge-rapporteur. At the day of the hearing, the Administrative Commission of the FPC had not yet decided on this request. I take from this that the request had been filed at a very late stage of the proceedings, most likely only after receipt of the judge-rapporteur’s expert opinion. The President informed the parties that a decion on this request will be handed down soon, well before the judgment on the merits.

Stakes are high

I concluded from the pleadings that K-fee had been willing to license the patents. No numbers were mentioned, but this offer was apparently rejected by Nestlé as too high by far («You can’t be serious!»).

✍ MW

BIBLIOGRAPHY

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

K-fee System GmbH
./.
Nestlé Nespresso SA

Panel of judges:

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

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

PATENTS IN SUIT

EP 3 023 362 B1:

EP 3 521 207 B1:

EP 3 521 209 B1:

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Ultrasun seeks annulment of two Stada patents re antioxidants / IR-A radiation

Reading time: 6 minutes
DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in co-pending EPO opposition proceedings re EP 105.

Case Nos. O2021_009 / O2021_010 | Hearing of 17 April 2023 | ‘Antioxidants; IR-A’

WHAT YOU NEED TO KNOW

Ultrasun sued Stada for nullity of EP(CH) 127 and EP(CH) 105.

Judge-rapporteur’s preliminary expert opinion: Patents as granted invalid; patentable subject-matter in lower-ranking requests.

Stada disputes admissibility of some of Ultrasun’s arguments / lines of attack submitted only in response to the expert opinion.

Judgment of the Swiss FPC can be expected within the next 3-5 months.

Oral proceedings before the OD in co-pending opposition proceedings at the EPO scheduled for 27 June 2023 and 4 July 2023, respectively. Ultrasun is not a party at the EPO.

Stada logo

Ultrasun seeks annulment of two Stada patents, i.e.

Ultrasun logo

The patents in suit relate to sun protection agents.

Historically, skin protection against UV light was in focus. But only less than 10% of the solar spectrum is ultraviolet radiation; UVC is blocked by the ozone layer anyway. The visible region covers about 40% of the solar spectrum; infrared radiation is the largest part.

According to the International Commission on Illumination (cie), the infrared radiation is split into three bands, i.e. IR-A (780 nm to 1’400 nm), IR-B (1,4 μm to 3,0 μm), and IR-C (3 μm to 1 mm).

Electromagnetic spectrum (Source)
IR-A claim

Infrared radiation is what the patents in suit are all about. More specifically, they pertain to the use of antioxidants to protect the skin against damage caused by near infrared radiation, i.e. IR-A. Stada’s Ladival series of products comes along with a prominent claim of protection against IR-A.

Announcement of the hearing

The official announcement of the hearing already provided an extensive list of prior art documents and arguments. In addition to unallowable amendments and insufficiency of disclosure, Ultrasun asserts that the subject-matter of the patents is anticipated by the following documents:

Further, Ultrasun holds that the claimed subject-matter was (at least) obvious in view of three of these documents, i.e. Schieke et al. 2002, Schröder et al. 2004 und WO 03/086329 A2.

Ladival logo

In written proceedings, Stada sought dismissal of the action in its entirety as to EP(CH) 127 and maintenance of EP(CH) 105 in a limited version. In the reply, Ultrasun sought annulment of the limited version of EP(CH) 105, too. Stada submitted further auxiliary requests for both patents in suit with the rejoinder.

The hearing

Three documents were discussed in some detail at the hearing, i.e. DE 100 20 447 A1, Schieke et al. 2002 and Schröder et al. 2004. On the merits, the judge-rapporteur held that Schröder et al. anticipates both patents. However, the parties disagree about the actual publication date of Schröder et al., i.e. whether it is prior art at all.

I did not catch the precise subject-matter of each and every auxiliary request that Stada has submitted in defense of the two patents. But I conclude from the pleadings that the judge-rapporteur had spotted some patentable subject-matter in (at least) lower-ranking auxiliary requests. However, I took from Stada‘s pleadings that certain lower-ranking requests had not been attacked with e.g. Schröder et al. before closure of the file. It appears that Ultrasun has submitted an extensive statement on the judge-rapporteur‘s expert opinion, with >1.2k paragraphs. Stada asserts that Ultrasun is not to be heard anymore with respect to several attacks newly presented only belatedly.

It remains to be seen how the FPC decides under the strict procedural rules of the CPC, without ex officio examination (unlike Art. 114(2) EPC). No settlement discussions took place; the President did not even ask the parties.

The President noted that the FPC is currently very busy. It may well be that a judgment will not be issued before the judicial vacations (15 July – 15 August 2023).

✍ MW

BIBLIOGRAPHY

Case Nos. O2021_009 / O2021_010 | Hearing of 17 April 2023 | ‘Antioxidants; IR-A’

Ultrasun AG
./.
Stada

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Frank SCHAGER
    • Dr. Michael KAUFMANN

Judge-rapporteur:

    • Dr. Frank SCHAGER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Adriel CARO (Caro)
    • Dr. Marc LOSCHONSKY (IP.DESIGN), assisting in patent matters
    • Tatjana STÖSS-BUFF (Evonik), assisting in patent matters

Representative(s) of Defendant:

    • Andrea MONDINI (TIMES)
    • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

ANNOUNCEMENT

PATENTS IN SUIT

EP 2 233 127 B1:

EP 1 591 105 B1:

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Nespresso’s Vertuo pods: Barcodes that aren’t barcodes?

Reading time: 6 minutes

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

Coffee pods are being litigated again! K-fee System GmbH has sued Nestlé Nespresso SA for infringement of three European patents, i.e.

K-fee logo

K-Fee belongs to the Krüger group of companies. Krüger recently partnered with Coca-Cola in the coffee pod business, i.e. with the production of pods that are compatible with the (classic) Nespresso® system.

Vertuo pod

All patents at stake in the present litigation feature a barcode on the pods, according to the independent claims.

The allegedly infringing pods are Nespresso® Vertuo® pods. And, indeed, there is a strange pattern on the rim of the Vertuo® pods. But … is it a barcode? With respect to infringement, that seems to be what the whole argument boils down to.

The Duck Test is positive, I’d say. And even Nespresso’s website says it’s a barcode:

Vertuo uses each capsule’s barcode to work out what temperature, quantity of water and number of revolutions are required to extract the perfect cup of coffee.

Nespresso Vertuo website

But things are more complicated than it seems, sometimes. If it looks like a duck and quacks like a duck but it needs batteries, you probably have the wrong abstraction. The Canard de Vaucanson wasn’t actually a duck.

Nespresso logo

The parties are also litigating in the U.S. The California Central District Court has already issued a Final (Summary) Judgment of Non-Infringement of the corresponding U.S. patents 10,858,176, 10,858,177, and 10,870,531 on 28 June 2022 (case no. CV 21-3402-GW-AGRx). K-Fee appealed to the CAFC (case no. 2022-2042). The proceedings are still pending. Meanwhile, the Joint Appendix (partly redacted; part I and part II) that has been filed with the CAFC is a wealth of information. Apparently, the California Central District Court applied a claim construction that differentiates between a ‘bit-code’ and a barcode:

It was critically important what K-Fee had submitted elsewhere as the interpretation of the Jarisch reference , i.e. what K-Fee had submitted in EPO opposition/appeal proceedings. Note that the Jarisch reference is a Nestec patent application, WO 2011/141532 A1. Here is how the EPO Opposition Division summarized K-Fee’s pleadings re D1, i.e. Jarisch (WO 532):

My best guess is that the Vertuo® pods make use of the Jarisch (WO 532) principle: The Vertuo system was developed in co-operation with Helbling, apparently making use of a lot of 0s and 1s. Further, there is an interesting thread on Reddit about the Vertuo® barcode, i.e. ‘Breaking the Nespresso Vertuo Barcodes’ (part I, II and III). There’s even a Vertuo barcode generator available for download on Github.

But will the FPC construe the claimed feature of a barcode to not cover a ‘bit-code’, as the EPO and the U.S. court did? That’s not a given. We shall see.  If it did, that would be a home-run for Nespresso. But things might get (much) more complicated when the FPC construes barcode in a way that also covers ‘bit-codes’. 

Accordingly, as a matter of precaution, Nespresso also asserts that the patents in suit are invalid for lack of novelty over WO 02/28241 A1 and EP 1 974 638 A1; and obviousness in view of WO 2007/122208 A1WO 2010/026053 A1 and  US 2010/0078480 A1.

As a last resort, should the FPC issue an injunction, Nespresso countersued K-Fee for a compulsory license under Art. 37 PatA (lack of patentee’s own use in Switzerland) and Art. 40 PatA (public interest).

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Interestingly, the EPO dockets reveal that Nestlé has sued K-Fee for assignment of the patents at stake before the Regional Court Düsseldorf; case no. 4b O 1/22. The Statement of Claim is heavily truncated and redacted. However, from K-Fee’s statement filed with the EPO I understand that Nestlé / Nespresso and K-Fee have no contacts in the coffee pod business. However, Nestlé apparently argues that K-Fee got hold of Nestlé’s prior knowledge of the claimed invention via Eugster Frismag. EPO proceedings are currently stayed.

The hearing at the FPC is scheduled for 22 March 2023. It will be interesting to hear how the judge-rapporteur assessed the facts at hand.

✍ MW

BIBLIOGRAPHY

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

K-fee System GmbH
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Nestlé Nespresso SA

ANNOUNCEMENT

PATENTS IN SUIT

EP 3 023 362 B1:

EP 3 521 207 B1:

EP 3 521 209 B1:

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