How to deal with an unclear feature in terms of infringement?

Case No. O2019_005 | Hearing of 17 March 2021

Reading time: 6 minutes
Hafner’s logo

As reported on this Blog here, Sanipat GmbH and Hafner AG are litigating over certain sealing strips for e.g. shower trays, i.e. Hafner’s ISO-SET®:

Hafner’s website

Sanipat had initially asserted EP 2 405 067 B1 and CH 703 691 (see the complaint below), but EP 067 has meanwhile been revoked by a Board of Appeal of the EPO; see T 0717/20 – 3.2.03 below. However, CH 691 is still in the game, and this is where it gets interesting.

Before EP 067 was revoked at the EPO, the judge-rapporteur’s expert opinion had held that EP 067 was valid. I understood from the pleadings that this was essentially due to a different interpretation of the feature ‘Klebefläche’ (adhesion surface). The Board of Appeal held that any surface that can be used for adhesion purposes reads on that feature:

But it appears that the expert opinion concluded that ‘Klebefläche’ implies an adhesive property of that surface. Accordingly, the expert opinion held that EP 067 was valid. This does not matter anymore for EP 067 itself, in view of the EPO’s revocation decision. But the same claim construction issue arises with respect to CH 691. It will be interesting to see how this turns out in the final judgement.

Notably, even though the FPC had requested accelerated appeal proccedings at the EPO, which request was granted, the FPC still followed its own timeline and moved forward with commissioning of the expert opinion.

Which is good, not only because of the second patent-in-suit!

In view of the (maybe, unexpected) claim construction in the judge-rapporteur’s expert opinion, Hafner presented further lines of attack against CH 691. However, these new lines of attack have not been admitted into the proceedings, as requested by Sanipat during the hearing.

On the infringement side, the parties disagree on the correct interpretation of cut protection strip (‘Schnittschutz-Streifen’). This is what the inspection in accordance with Art. 181, 182 CPC was all about. The cutting experiments showed that ISO-SET® could well be cut with relative ease with a knife. Still, ISO-SET® has an aramid backing in the area of the joint to be sealed. The experiment showed that this backing increased the necessary force to cut through the strip about fivefold.

But is that all that is needed to be cut protective?

A reference product (in my understanding, according to the patent in suit beyond dispute) is Flexzarge® Schnittschutz® of GABAG. This product has a metal backing that could not be cut through with a knife.

Hafner argued that the inspection clearly showed that ISO-SET had no cut protection strip; the feature implied that cutting had to be prevented (completely). On the other hand, Sanipat argues that ISO-SET has improved protection against accidential cutting due to the aramid backing, and that Hafner itself claimed that this aramid backing is meant to keep the sealing tight even when the silicone joint is replaced.

Finally, Hafner made an interesting argument on the consequences of unclarity. With reference to Heinrich (PatG 51, N 20), Hafner argued that an unclear claim has no scope at all. But even if one would find this too harsh of a consequence, unclarity should be dealt with in a similar way as in contract law, i.e. in dubio contra stipulatorem (133 III 118, ¶ 2). In Hafner’s view, this should be the case in patent matters a forteriori, since the defendant did not have a chance to proof-read (and accept) the ‘contract’ beforehand.

I could not stop thinking about this over the weekend.

Sure, a patentee has to bear the consequences of an unclear feature in the assessement of validity, simply because an «unclear term cannot be used to distinguish the invention from the prior art» (EPO Guidelines, G VI, 1.); an unclear feature is thus being construed (very) broadly in examination and validity later on. But when a claim is held valid despite the unclarity, can the interpretation of that feature then be any different in terms of infringement?

In O2013_008, the FPC applied the ‘broadest interpretation’ approach in the assessment of infringement of a claim  («Da dem Anspruch immer die breiteste Auslegung gegeben werden muss, […]»; see ¶ 4.2, p. 22, last paragraph, emphasis added). Later decisions have frequently referred to this ever since, but with the explanation that such a broad interpretation must not impair the intended functioning of the feature in the context of the invention; see e.g. O2019_003 (¶ 22).

I am not aware of any decision re validity where mercy had been given to an unclear feature. And I cannot readily see that two different standards of claim construction can be applied in the assessment of validity and infringement, in particular not before one and the same court.  However, in the German bifurcated system, the Federal Supreme Court had apparently some sympathy for a narrowest possible claim construction in an infringement case in view of an unclear feature; X ZR 95/05:

It will be interesting to see how the FPC deals with this argument.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005 | Hearing of 17 March 2021

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Alfred KÖPF

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Lukas ABEGG

Representative(s) of Sanipat:

    • Dr. Andri HESS (Homburger)
    • Dr. Bruno Meyer (prins), assisting in patent matters

Representative(s) of Hafner:

    • Dr. Michael RITSCHER (MLL)
    • Michelle AMMANN (MLL)
    • Silvan LATSCHA (L&S), assisting in patent matters

ANNOUNCEMENT

COMPLAINT AS FILED

EP 2 405 067 B1

T 0717/20 – 3.2.03

CH 703 691 C1

Second partial surrender, published on 30 April 2019:

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Suffering from COPD

Reading time: 11 minutes

Case No. O2018_008 | Decision of 2 February 2021

We have reported about the main hearing in this matter on this Blog here.

Tiotropium bromide

Glenmark had challenged the validity of Boehringer Ingelheim’s EP(CH) 1 379 220 H1, which is the Swiss part of EP 1 379 220 B1 after a partial waiver. The patent is about tiotropium capsules for inhalation and relates to BI’s Spiriva® Handihaler® for the management of chronic obstructive pulmonary disease (COPD).

With the partial waiver, BI split the independent claim into two alternatives (amendments marked-up in bold; only available in German, for the time being); see the claims in mark-up below:

Claim 1 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass als Kapselmaterial Gelatine im Gemisch mit dem Zusatz Polyethylenglycol (PEG) in einem Anteil von 1–10 Gew-%, bevorzugt 3–8 %, verwendet wird und dass das Kapselmaterial einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 10% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.

Claim 3 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass das Kapselmaterial Hydroxypropylmethylcellulose ist und einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 5% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.
the outcome in a nutshell

As to the common general knowledge (CGK) of the skilled person, the decision holds, with reference to Aulton (a textbook which at the face of it is not prior art but has still been referred to by both parties) and Voigt/Fahr, that the skilled person knew that gelatine as a capsule material was an established material that is suitable for dose inhalation. The skilled person further knew that hydroxypropyl methylcellulose (HPMC) can also be used as a capsule material in general, and in particular in connection with inhalation. The landmark article Ogura et al., which is referred to in Aulton, would probably be consulted by the skilled person without further ado in connection with the selection of a material for such a capsule, even if the content per se was not part of the CGK.

On the merits, the decision holds that the invention had been obvious over Maessen et al. in further view of JP 502 (JP 2000-143502, available as machine translation). Undisputed between the parties, the distinguishing features of claim 1 over Maessen et al. are that the capsule material

    1. is gelatine, admixed with 1-10% of PEG; and
    2. has a moisture content of less than 10%.

JP 502 discloses a broader range of PEG (0.4-33%) and an upper limit of 14% for the moisture content, with 8-12% being preferred. Cutting a long(er) story short, the decision holds that the selected sub-ranges are just an arbitrary selection from JP 502, without any apparent / surprising effect. Accordingly, being a mere alternative to what had already been more broadly suggested in JP 502, the subject-matter of the partially waived patent was held obvious. Experimental evidence submitted by the patentee were of no avail since they did show a comparison with the compositions taught by Maessen et al. and/or JP 502.

Essentially the same reasoning is applied in the decision with respect to claim 3, which is held obvious over Maessen et al. and Ogura et al. (or vice versa).

The German Federal Supreme Court had revoked the German part of EP 220 already back in 2016 with a similar reasoning; X ZR 38/14.

The ‘closest prior art’, revisited

The decision holds that it is not possible in civil proceedings to disregard a certain piece of prior art as the ‘closest prior art’ in the problem-solution approach when a party to the proceedings referred to it as such; ¶ 36. At least at first glance, this appears to be indeed settled case-law of the FPC; see e.g. O2013_011, ¶ 5.6 and S2017_001, ¶ 4.6. Note that Dieter BRÄNDLE, the former President of the FPC, has recently contributed an article on this issue to the Festschrift for Peter Meier-Beck; see p. 147 et seqq.

What is interesting, though, is fn 10:

This footnote refers to a different opinion in the commentary Patentgesetz (PatG), Art. 1 N 70,  There, it is held that certain pieces of prior art are unsuitable as a starting point for assessing inventive step and should not be taken into account:

Nach hier vertretener Auffassung gibt es Entgegenhaltungen, die als Ausgangspunkt für die Beurteilung der erfinderischen Tätigkeit ungeeignet und nicht zu berücksichtigen sind.

This different opinion has weight: The co-author of this chapter is Mark SCHWEIZER, the current president of the FPC — who has not been on the panel in the present matter. It will be interesting to once see a case where this is the potentially decisive issue. Maybe, the case-law of the FPC is not as settled as it might appear at first glance: Mark SCHWEIZER had not been on the panel in the two cases O2013_011 and S2017_001.

Does the ‘technical contribution’ test survive?

The EPO is renowned for a rather strict approach to allowability of amendments. Just by way of example, selection and combination of elements from two lists of certain lenghts is typically held to contravene Art. 123(2) EPC in EPO proceedings. In my view, the ‘two lists’ approach took a life of its own and is frequently applied as a mere formalism, without actually looking into what really matters, i.e. what the skilled person would really have understood from the lists, with the whole content of the application as filed in mind.

‘Two lists’, uh?

Getting straight to the point, an esteemed colleague recently referred to the ‘two lists’ approach simply as «garbage» in an official meeting. That’s a pretty harsh statement, and I guess only a Brit can make it sound serious. But to the extent that a formalism must not replace the gist of the law, I do agree with it.

Now, what about selections from converging lists?

The present decision of the FPC makes an interesting reference in ¶ 26 to the hn of a recent decision of a Board of Appeal of the EPO, i.e. T 1621/16, as follows:

1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.

2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:

i)  the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and

ii)  the application as filed includes a pointer to the combination of features resulting from the multiple selections.

I very much appreciate any attempt to overcome the mere formalism of the ‘two lists’ approach. However, I wonder whether reference and early adoption of T 1621/16 might be premature. 

First, T 1621/16 is not case law of the Boards of Appeal yet (as it is referred to in ¶ 26 of the decision). Actually, it is the very first decision of its kind, and it remains to be seen whether this will be sth that other Boards adopt — or not. It may well be that this decision turns out to be an outlier, for reasons outlined below.

Second, not even T 1621/16 itself says that the two criteria in hn 2 are the only ones to take into account. On the contrary, hn 2 holds that Art. 123(2) EPC «might be considered to be met» when these two criteria are fulfilled. Yet more criteria might apply, as is expressly held in ¶ 1.7.3: «For the board, at least the following two conditions should be met: […].» To me, T 1621/16 is more aiming to trigger a discussion and further evolvement of the case-law of the Boards rather than to carve a new test in stone. Whether this will end up in a new test (and if so, which one) remains to be seen.

Third, I don’t feel comfortable at all with the reference to the (lack of an) «undisclosed technical contribution» in hn2, item i).

For novelty and basis in the application as filed, the same «gold standard» is applied at the EPO, asking for «what a skilled person would derive directly and unambiguously, using common general knowledge,» from a certain piece of prior art or the application as filed; see Case Law of the BoA, E 1.1, fourth but last paragraph.

For the assessment of novelty, however, the majority of the Boards appear to have moved away from asking whether a certain selection of a sub-range from a broader range in the prior art is associated with a new technical teaching / previously undisclosed effect. For good reason. Arguably, the assessment of effects is indeed more related to obviousness rather than to novelty. Even the EPO Guidelines had been amended in November 2019: The third criterion that asked for a purposive selection or new technical teaching was deleted.

EPO Guidelines Nov 2019 (mark-up over 2018 edition)

epi had sent a letter to the President of the EPO in October 2019, asking to refer this issue to the Enlarged Board of Appeal because there was not (yet) consensus across the Boards. I fully share epi’s concerns. But the EPO replied that this was just regular evolvement of case law, and that the time was right to amend the Guidelines accordingly. Both letters are available here.

Now, what? I cannot really see how a check for a previouly undisclosed technical contribution might become part of the test for allowability of selections from converging list, while at the same time we don’t care anymore about the technical contribution in the test for novelty of sub-ranges. I may well be wrong, but this is why I do not yet see that the approach taken in T 1621/16 will be broadly adopted by the Boards.

Interestingly, the decision of the FPC also discusses a report of the Comptroller on proposed amendments in corresponding proceedings in the UK; see ¶ 27. The Comptroller had held in a report of 17 June 2015 with respect to a certain amendment that no «special advantage» of the selected features was apparent, and that the amendement therefore added matter:

The present decision holds that such considerations were alien to the assessment of the admissibility of amendments; they would rather have to be dealt with under obviousness:

Suffering from COPD

Don’t get me wrong, I do agree that such considerations relate more to obviousness than to added matter. But still, I don’t feel that the Comptroller can be blamed for confusing concepts when T 1621/16 does exactly that: Applying concepts of obviousness in the assessment of added matter.

Oh man, sometimes it feels like I am suffering from a very special form of COPD, i.e. a Chronic Obviousness and Pointer Disorder.

UPDATE 10 March 2021:

An appeal is pending at the Supreme Court.

Reported by Martin WILMING

Header image courtesy of Vecteezy

BIBLIOGRAPHY

Case No. O2018_008 | Decision of 2 February 2021

Glenmark Pharmaceuticals Europe Ltd
./.
Boehringer Ingelheim Pharma GmbH & Co. KG

Panel of Judges:

    • Dr. Daniel ALDER
    • Dr. Tobias BREMI
    • Marco ZARDI

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Markus WANG (Bär & Karrer)
    • Dr. Christoph FRAEFEL (SBMP), assisting in patent matters

Representative(s) of Defendant:

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

DECISION IN FULL

PATENT IN SUIT

EP 1 379 220 B1 (as granted):

EP(CH) 1 379 220 H1 (after partial waiver):

Claims after partial waiver, mark-up:

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Injunction after the patent has lapsed?

Reading time: 4 minutes

Case No. O2019_006 | Decision of 22 December 2020

Sandoz’s logo

We have reported about the main hearing of 16 November2020 on this Blog here. In brief, AstraZeneca asserted EP(CH) 2 266 573 B1 (see EPO Register and Swissreg for further information) against Sandoz’s generic version of AZ’s Faslodex®, i.e. Fulvestrant Sandoz 250 mg / 5 ml (Swissmedic approval no. 56778).

And, indeed, the FPC holds that Fulvestrant Sandoz 250 mg / 5 ml infringes EP’573.

A somewhat strange timeline
AZ’s logo

EP’573 had already been close to the end of its 20y term (8 January 2021) when the main hearing took place, and I wondered whether the judgment would be handed down before the patent lapses. But I did not anticipate an outcome where the decision actually dates before the patent lapsed (see the date on the title page: 22 December 2020), but apparently has only been sent out to the parties well after the patent lapsed (see the footer on the last page: 20 January 2021).

From the reasons of the decision, I get the impression that it has been written before the patent has lapsed. The lapse of the patent is referred to as a point of time in the future:

What is more, the decision comprises an injunction in item 2 of its operative part (which, in light of the reasons, is surely not meant to be a spring-board injunction).

But why then hasn’t it been sent out earlier, i.e. before the patent lapsed? Maybe, the reasons of the decision had not yet been fully reviewed / agreed on by the whole panel of judges. But even in that case, at least the operative part of the decision could have been sent out earlier, in accordance with Art. 239(1) lit. b CPC.

I don’t really get it; the timeline is a bit strange to me.

Obviousness / The objective technical problem

Validity of EP’573 in view of Howell and McLeskey had already been dealt with — and approved — by the FPC in proceedings between AZ and Actavis; see this Blog here.

Likewise, EP’573 had also been maintained by a Board of Appeal with decision T 1680/17 of 24 January 2019. Thus, the outcome in the present matter that EP’573 is non-obvious over the same prior art does not come as a huge  surprise. It also is in line with proceedings in The Netherlands (Gerechtshof Den Haag, 200.237.828/01), but contrary to what has been held by the German Federal Supreme Court (X ZR 59/17).

Infringement

Sandoz had disputed that its generic actually infringes EP’573 because the claim requires 10% (w/v) of ethanol. Sandoz had argued that ethanol refers to the substance EtOH, not to the various degrees of purity of EtOH that are available on the market. Apparently, Sandoz uses 10% EtOH with a purity of 96%, i.e. only 9.6% of the substance EtOH.

However, the decision holds that ethanol is to be construed, in view of the specification, as ethanol according to the Pharmacopeia standard, i.e. with a purity of 94.9 to 96%.

Expenses for patent attorneys in mixed firms

Sandoz had questioned whether costs incurred by a patent attorney who is a partner of the same law firm that does the legal representation are actually refundable as «necessary expenses» in accordance with Art. 3 lit. a CostR.

Good new for mixed firms: The decision holds that this is not an issue.

Miscellaneous

The decision holds that AstraZeneca AG’s standing to sue had not been proven; a distribution agreement between AstraZeneca AB and AstraZeneca AG was not sufficient in this respect.

UPDATE 12 March 2021:

The decision has not been appealed / is final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_006 | Decision of 22 December 2020

(1) AstraZeneca AB
(2) AstraZeneca AG
./.
Sandoz Pharmaceuticals AG

Panel of Judges:

    • Dr. Rudolf RENTSCH
    • Prisca VON BALLMOOS
    • Marco ZARDI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of AstraZeneca:

    • Dr. Michael RITSCHER (MLL)
    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Sandoz:

DECISION

PATENT IN SUIT

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Infringement proceedings re injector pens derailed, Supreme Court holds that appearence of bias has to be re-assessed

Reading time: 18 minutes

Case No. 4A_243/2020 (Supreme Court) | Decision of 5 November 2020 on appeal against O2017_022 | Order of 8 April 2020 (unpublished)

The defendant / respondent in this matter had been sued for infringement of three patents by certain injector pens back in November 2017 at the FPC. The case number is O2017_022; nothing has surfaced about this case by now. The panel of judges is Dr. Christoph Gasser (presiding judge), Dr. Tobias Bremi (judge-rapporteur) and Dr. Kurt Sutter. Judge Bremi’s expert opinion was sent to the parties for comment on 7 January 2020. In the expert opinion, judge Bremi inter alia held that one of the three patents was valid and infringed. 

Less than a week later, on 13 January 2020, yet another party sued the very same defendant for infringement of its patent by the very same injector pens which are at stake in O2017_022. This second case is referred to as O2020_001. From the details reveiled in the Supreme Court decision, it is clear that the plaintiff in the second proceedings is represented by MLL.

Nothing out of the ordinary this far. But the defendant then requested that judge-rapporteur Bremi recuse himself from the first proceedings O2017_022. The defendant argued that judge Bremi’s employer, the patent attorney firm I&P of which he is a partner, was registered as the representative of patents of the plaintiff in the second proceedings O2020_001 before the Swiss IPI, including the patent-in-suit in that case. The second action O2020_001 was directed against the same injector pens of the defendant as in O2017_022, which was why the outcome in O2017_022 had considerable prejudicial significance for O2020_001.

You cannot make this up. Here is the factual setup again, in short:

Factual setup

With decision of 8 April 2020, the Administrative Commission (AC) of the FPC dismissed the request for recusal. In sum, the AC held that a part-time judge who is an employee of a firm that only performs administrative support tasks for a third party who brings an action on a different legal basis against the defendant cannot objectively give rise to any mistrust in the impartiality of the part-time judge in proceedings in which the employee is acting as a part-time judge.

The Supreme Court did not agree. At least not for now, and not so easy. Rather, it depends. But the facts have not (yet) been sufficiently established by the FPC’s AC for the Supreme Court to decide.

But first things first. Let’s have a closer look at some of the extensive case law that is referred to by the Supreme Court about cases in which a part-time judge (or arbitrator) was particularly connected to a litigant because of his activity in a law firm. If you are only interested in the case-specific issues, feel free to jump here.

Case law review

In general terms, the Supreme Court held that the guarantee of a constitutional judge applies equally to full-time and part-time judges. The fact that the use of part-time judges increases the likelihood of professional relations with one of the parties to the proceedings compared to full-time judges who do not pursue any other gainful activity does not justify a less stringent application of the constitutional requirements (139 III 433, ¶ 2.1.3).

In the interest of the credibility of the FPC with only two full-time judges and a vast majority of part-time judges particular attention must be paid to judicial independence. Still, the legislator deliberately set up a specialised court for patent law and staffed it with specialised judges whose main profession is also related to patent law. The Supreme Court held that this must also be taken into account.

According to settled case law of the Supreme Court, a lawyer acting as a judge appears to be biased if there is an outstanding mandate with a party or if he has acted as a lawyer for a party several times in the sense that there is a kind of permanent relationship between them. This applies irrespective of whether the mandate has a factual connection with the subject matter of the dispute or not (140 III 221, ¶ 4.3.1; 139 III 433, ¶ 2.1.4; 138 I 406, ¶ 5.3; 135 I 14, ¶ 4.1). In such a situation, the lawyer acting as judge may be tempted, even if unconsciously, not to want to alienate his client by making a decision that is unfavourable to him (135 I 14, ¶ 4.3).

Furthermore, the Supreme Court repeatedly held that a lawyer acting as judge or arbitrator does not only appear to be biased if he represents or has represented one of the litigants in another proceeding shortly before, but also if such a representation relationship exists or has existed with the opposing party of one of the litigants in the other proceeding (139 III 433 , ¶ 2.1.4;  138 I 406, ¶ 5.3; 135 I 14, ¶4.1-4.3; 139 I 121, ¶ 5.1; 139 III 120, ¶ 3.2.1). There is an appearance of bias insofar as the litigant could objectively fear that the judge might not want to rule in his favour because he was acting for the opposing party of his client in the other proceedings. A litigant often transfers his or her negative feelings towards the opposing party to the latter’s legal representative, as the latter supports the opposing party in the dispute. For many parties, the lawyer of the opposing party is considered as much an adversary as the opposing party itself, all the more so as he is perceived as the actual strategist. It is therefore understandable that a party does not expect a judge who is fighting against it in other proceedings as a representative of the opposing party and who — from its point of view — will possibly deprive it of its rights or has deprived it of its rights, to suddenly face it with complete impartiality (138 I 406, ¶ 5.3; 135 I 14, ¶ 4.3). This applied irrespective of whether or not the lawyer’s mandate had a factual connection with the subject matter of the dispute (138 I 406, ¶ 5.4.1). In such cases, the Supreme Court regularly assumes a prima facie case of bias irrespective of the further concrete circumstances (139 III 433, ¶ 2.1.4; 138 I 406, ¶ 5.4.1). In particular, in the case of an ongoing relationship with a party to the proceedings, it cannot matter whether the mandate exercised is considered important or less important by the party or the lawyer (139 III 433, ¶ 2.1.4).

Further, the Supreme Court had held that an appearance of bias also arises from the fact that it is not the part-time judge himself, but another lawyer in his firm who has a mandate with a litigant or who has had such a mandate several times before or in the sense of a permanent relationship. The client expects loyalty not only from his contact person within the law firm, but from the entire firm. The uniform approach is also in line with the law governing the legal profession, which treats all lawyers in a law firm as one lawyer with regard to a conflict of interest (140 III 221, ¶ 4.3.2; 139 III 433, ¶ 2.1.5).

The Supreme Court has also held that it is inadmissible for a lawyer to participate as a judge in a case that may have significant prejudicial significance for a similar proceeding in which he is representing a third party as a lawyer (139 III 433, ¶ 2.1.6). Thus, there would be a prima facie case of bias if a part-time judge was appointed to rule in a case in which the same legal questions arose as in another pending case in which he or she was acting as counsel (128 V 82, ¶¶ 2a and 3d; 124 I 121, ¶ 3). With reference to these two decisions, the Federal Supreme Court later considered that the question of recusal could arise if a judge represented a third party in parallel proceedings who pursued the same interests as one of the parties to the proceedings. This was to avoid the judge deciding on a dispute in a way that could improve his or her position as a lawyer in the parallel proceedings (133 I 1, ¶ 6.4.3).

Even purely administrative activities of a lawyer acting as a part-time judge or of his law firm are not per se unobjectionable. But not every relationship of any kind of an economic, professional or personal nature in itself gives rise to the appearance of bias (125 II 541, ¶ 4b). For such a relationship to give rise to concerns of bias, objective circumstances must indicate a certain intensity of the relationship (9C_257/2016, ¶ 4.2.1; 8C_467/2014, ¶ 4; 4A_256/2010 ¶ 2.4). Whether a relationship reaches this degree of intensity is assessed on the basis of the specific circumstances of the individual case. See, for example, 4A_256/2010 ¶ 2.5 regarding a patent application. If the objected relationship is not with a party to the proceedings but with its opposing party or a third party in another proceeding, the effect of the two proceedings on each other must also be taken into account when deciding on the recusal.

The case at hand

In its internal Guidelines on Independence, the FPC does not equate purely administrative activities and the provision of an address for service with (patent) attorney activities. However, the FPC also does not assume that such activities are unproblematic with regard to the appearance of bias in every case. According to Art. 4 lit. f of the Guidelines, a judge shall recuse if he (or the company for which he works) is or was acting as addressee for service of the patent-in-suit. According to Art. 4 lit. g, the judge shall also recuse if he (or his company) is or has been directly mandated by the party to the dispute as addressee for service and to maintain the validity of its IP rights within the year or on a regular basis.

Accordingly, judge Bremi may not participate as a judge in the second case O2020_001 due to the administrative relationship of I&P with the plaintiff in the second case. The Supreme Court holds that on the other hand, according to the Guidelines, there is no bias («besteht keine Befangenheit») on the part of judge Bremi for the first patent infringement case, as his law firm was not mandated by a «party to the dispute directly» as an addressee for service and to maintain its IP rights. The firm was rather mandated by a third party, namely the plaintiff in the second case O2020_001, which is not a party to the first case O2017_022.

I respectfully disagree with the Supreme Court in this respect. Art. 4 of the Guidelines is an open list of grounds for recusal («insbesondere»). Accordingly, it cannot be said that the Guidelines hold that there is no bias in the situation at hand. Anyway, the Supreme Court rightly emphasises that the Guidelines can help judges to better assess their potential bias in the specific case. But what ultimatley counts is the law itself (139 III 433, ¶ 2.2). In particular, the Guidelines must not lead to the conclusion that a judge can in no way be biased by administrative work, apart from the specific situations governed by Art. 4 lit. f and g. Whether a reason for recusal exists has to be assessed according to Art. 47 CPC (to which the Guidelines refer to in the general clause of Art. 3), taking into account the principles flowing from Art. 30(1) FC (to which the Guidelines do not explicitly refer to), according to the specific circumstances of the individual case. Accordingly, even in the case of purely administrative activities, a concrete and case-specific assessment must be carried out to determine whether there is an appearance of bias.

Now, does the relationship between I&P and the plaintiff in the second patent infringement proceedings reach such an intensity under the specific circumstances for judge Bremi to appear to be biased in the first patent infringement proceeding?

To answer this question, the Supreme Court held that two aspects need to looked at more closely:

    1. The extent of the relationship between I&P and the plaintiff in the second proceedings; and
    2. the effect of the outcome of the first proceedings on the second proceedings.

As to the first aspect, i.e. the relationship between I&P and the plaintiff in the second proceedings, the contested decision of the FPC’s AC only stated that I&P’s activities were limited to purely administrative representation at the IPI. The appellant argued that it is not clear from the contested decision how the FPC could even know this. Indeed, the Supreme Court held that the FPC merely stated that I&P’s activities for the plaintiff in the second proceedings were limited to purely administrative representation. But there was no evidence for this statement, which the appellant rightly complains about. It was not baseless from the outset when the appeallant argued that in a business relationship lasting more than 15 years, it cannot be assumed without further clarification that I&P does not represent any interests of that party other than receiving mail from the IPI. Accordingly, the Supreme Court held that the FPC’s AC should have clarified the nature, scope and duration of the specific business relationship between I&P and the plaintiff in the second proceedings and, in particular, the FPC should have verified whether I&P did not provide the plaintiff in the second proceedings with more extensive (patent) legal advice, as the appellant suspects.

As to the second aspect, i.e. the effect of the first proceedings on the second one, the FPC only stated that in the second proceedings an unnamed third party asserts infringement of a not specifically identified patent by the same injector pens of the appellant. Further details are missing; not even the name of the plaintiff in the second proceedings is known (what a pity, indeed). Further, it is not known whether the two actions are directed against the same embodiment of the (type of) injector pen. Nor is it known whether the plaintiff in the second action is a competitor of the appellant who could benefit from the first action being upheld.

The Supreme Court acknowledged that due to the different patents-in-suit, the second proceedings against the appellant presumably raise different technical and legal questions than the first proceedings. Still, there may be delicate interferences. For instance, according to the appellant’s submissions, which have yet to be established in evidence by the FPC, the plaintiff in the second proceedings could pursue the same interests as the plaintiff respondent in the first proceedings, namely a ban on the manufacture and distribution of the attacked injector pens. Accordingly, such a ban in the first proceedings would also serve the plaintiff in the second proceedings. Further, the Supreme Court did note that, if the respondent’s action were to be upheld, the appellant could well come up with a workaround that lies outside the scope of protection of the patents asserted in proceedings O2017_022. However the Supreme Court held that, as the appellant rightly argued, it is generally known that medical products cannot be adapted and brought to market overnight, but are regulated products, so that the plaintiff in the second proceedings may well have an interest in the respondent’s complaint to succeed.

In this factual situation, the FPC’s AC should have clarified the concrete effects of the two pending patent infringement proceedings for the question of judge Bremi’s recusal in the first proceedings. Based solely on the factual elements established in the contested decision, it was not possible for the Supreme Court to conclusively examine the concrete effects of the first proceedings O2017_022 on the second proceedings O2020_001. The FPC’s AC has thus not established all the relevant facts, which prevented the Supreme Court from correctly applying the rules on recusal.

A contingent reasoning of the FPC’s Administrative Commission did not convince the Supreme Court, either. The FPC had concluded that even if one were to assume that the facts of the case objectively gave rise to the appearance of bias, the appellant could not invoke it in view of a violation of the requirement to act in good faith in the proceedings (Art. 52 CPC), because the appellant had created the ground for recusal itself with the request for recusal and the facts and arguments contained therein. In the FPC’s view, as judge Bremi was not involved in the second proceedings O2020_001, he had not been aware of anything from these proceedings apart from the names of the parties involved. His employer I&P was not involved in the second proceedings. In particular, judge Bremi had not been aware until the appellant’s request for recusal that the second proceedings were directed against the same injector pens as in O2017_022. The FPC had held that it was against the requirement of acting in good faith to provide a judge with the very knowledge that allegedly made him appear biased: If the appellant had not filed a request to recuse herself, no appearance of bias could have arisen because judge Bremi would simply not have known that his employer (allegedly) had an interest in him ruling against the complainant in proceedings O2017_022. The complainant could therefore not invoke the ground for recusal even if it existed.

The Supreme Court held that this line of reasoning is mistaken. Since it is not important for the appearance of bias of a judge whether he is actually biased, it cannot be decisive for the assessment of the reason for recusal whether the judge had already been aware at the time of filing the request for recusal request whether a certain reason for recusal existed, or whether a party first made him aware of such a reason. The Supreme Court notes that, ultimately, the FPC’s contingent reasoning would mean that wherever a judge is not (yet) aware of an existing ground for recusal, no request for recusal could be made because the party would otherwise be violating the good faith principle by making the judge aware of the ground for recusal. This would contravene the very essence of the rules on recusal.

Accordingly, the FPC’s contingent reasoning did not hold, either.

In sum, the Federal Supreme Court could not finally assess whether judge Bremi is biased in the first patent infringement proceedings O2017_022 because the facts have not yet been sufficiently established. The case has accordingly been remitted to the FPC to completely establish the facts and to render a new decision.

Full stop!

That’s a harsh stop to O2017_022 at a very late stage of the proceedings, well after the expert opinion of judge-rapporteur Bremi had been established and most likely only shortly before the main hearing. It will be interesting to see how the FPC deals with the remittal. In particular, I wonder how to properly and openly assess the potential cross-contamination between the two proceedings, while at the same time not to disclose otherwise non-public information of both plaintiffs to each other. They are most likely competitors, and would not normally know about particulars of the respective other proceedings.

Now, who are the parties?

I feel ashamed but I do not feel confident enough (yet) to come up with an educated guess here. But, clearly, there is only a limited number of high-stake companies that could be involved:

Injector pen key market players (see here)

Any one of these companies being sued by two others for infringement of their respective patent(s) by one and the same injector pen will be an interesting setup from a market perspective. We shall see.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_243/2020 (Supreme Court) | Decision of 5 November 2020 on appeal against O2017_022 | Order of 8 April 2020 (unpublished)

n/a (Appellant / Defendant)
./.
n/a (Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANELLAS

Court Clerk:

    • Daniel BRUGGER

Representative(s) of Respondent / Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Dr. Roman BAECHLER (Homburger)

Representative(s) of Appellant / Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)

SUPREME COURT DECISION
Appeal against the order of the FPC’s Administrative Commission of 8 April 2020 (unpublished) in case O2017_022, rejecting the request for recusal of judge-rapporteuer Tobias Bremi
Case no.: 4A_243/2020
Decision of: 5 November 2020

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BI’s uphill fight re validity of EP 1 379 220

Reading time: 5 minutes

Case No. O2018_008 | Hearing of 10 December 2020

BI’s logo

The main hearing in this matter had initially been scheduled and announced for 24 September 2020, but was cancelled on short notice.

Finally, the main hearing took place earlier this week, on 10 December 2020.

Tiotropium bromide

Glenmark challenges validity of Boehringer Ingelheim’s EP(CH) 1 379 220 H1, which is the Swiss part of EP 1 379 220 B1 after a partial waiver. The patent is about tiotropium capsules for inhalation and relates to BI’s Spiriva® Handihaler® for the management of chronic obstructive pulmonary disease (COPD).

There is big business behind; Spiriva® is still a blockbuster with € 2.3 bn of sales in 2019, but generic competition is on the rise. And it is an uphill fight for BI in view of what courts have already decided elsewhere concerning the very same patent (or a closely related one, such as in Norway). Just to name a few decisions that I could readily spot:

Germany

The Netherlands

United Kingdom

Norway

On the other hand, the High Court of Ireland held that EP 220 is valid; see [2017] IEHC 495.

UPDATE 18 December 2020:

Thanks to Simon HOLZER for bringing the Irish decision to my attention.

Now, which claims are still at stake in the Swiss proceedings? As a quick recap, claim 1 as initially granted reads as follows:

Capsules for inhalation which contain as the inhalable powder tiotropium in admixture with a physiologically acceptable excipient, characterised in that the capsule material has a reduced moisture content as a TEWS or halogen drier moisture content of less than 15%.

With the partial waiver, BI split the independent claim into two alternatives (amendments marked-up in bold; only available in German, for the time being); see the claims in mark-up and BI’s request below:

Claim 1 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass als Kapselmaterial Gelatine im Gemisch mit dem Zusatz Polyethylenglycol (PEG) in einem Anteil von 1–10 Gew-%, bevorzugt 3–8 %, verwendet wird und dass das Kapselmaterial einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 10% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.

Claim 3 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass das Kapselmaterial Hydroxypropylmethylcellulose ist und einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 5% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.
Glenmark’s logo

I understood from the pleadings that the judge-rapporteur’s expert opinion held that both claims 1 and 3 had been obvious in view of the prior art.

Both parties essentially only argued re (in)validity of claim 3, i.e. inhalation capsules based on hydroxypropyl methylcellulose (hypromellose; HPMC). In particular, the parties apparently dissent on whether claim 3 of EP 220 H1 provides for an (unexpected) advantage over the prior art, or merely an alternative.

I could not stay until the very end of the hearing, but I do not assume that I missed an essential twist of things after the lunch break. Assuming that the parties have not settled, a judgment can be expected early next year.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_008 | Hearing of 10 December 2020

Glenmark Pharmaceuticals Europe Ltd
./.
Boehringer Ingelheim Pharma GmbH & Co. KG

Panel of Judges:

    • Dr. Daniel ALDER
    • Dr. Tobias BREMI
    • Marco ZARDI

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Markus WANG (Bär & Karrer)
    • Dr. Christoph FRAEFEL (SBMP), assisting in patent matters

Representative(s) of Defendant:

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

ANNOUNCEMENT

PATENT IN SUIT

EP 1 379 220 B1 (as granted):

EP(CH) 1 379 220 H1 (after partial waiver):

Claims after partial waiver, mark-up:

Request of partial waiver:

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Waiting for a Fulvestrant judgment while the end of the 20y term approaches

Reading time: 3 minutes

Case No. O2019_006 | Main hearing of 16 November 2020

Sandoz’s logo

AstraZeneca asserts EP(CH) 2 266 573 B1 (see EPO Register and Swissreg for further information) against Sandoz’s generic version of AZ’s Faslodex®, i.e. Fulvestrant Sandoz 250 mg/5ml (Swissmedic approval no. 56778).

AZ’s logo

Note that Sandoz’s generic has been on the market in Switzerland since 26 July 2016. AZ had asserted a different patent against the same generic already in summary proceedings S2016_007, i.e. EP 1 250 138 B2 (see this Blog here), but has apparently withdrawn that request later. Earlier this year, AZ’s complaint based on yet another patent, i.e. EP 1 272 195 B1, has failed, too (O2017_014); see this Blog here. Prior to the present main proceedings, AZ sought interim injunctive relief based on EP’573 (S2019_004), but could not establish urgency anymore; see this Blog here.

Meanwhile, EP’573 comes close to the end of its term, which is 8 January 2021. It will be interesting to see whether the judgment is handed down before the patent lapses.

Watches?!

Validity of EP’573 in view of Howell and McLeskey has already been dealt with by the FPC and the Supreme Court in proceedings between AZ and Actavis; see this Blog here. That’s an uphill fight for Sandoz.

But the case is not only about (in)validity of EP’573. Sandoz also disputes that its generic actually infringes EP’573. Note that the claim requires 10% (w/v) of ethanol. Sandoz argues that ethanol refers to the substance EtOH, not to the various degrees of purity of EtOH that are available on the market. Apparently, Sandoz uses 10% EtOH with a purity of 96%, i.e. only 9.6% of the substance EtOH. Sandoz argues that EP’573 itself puts emphasis on certain dilutions of EtOH, e.g. in [0031] and [0046]; and [0034] mentions «about 10%» of ethanol, but not the claim.

Yet another interesting discussion came up with respect to AZ’s expenses for the assisting patent attorneys. Sandoz questioned whether costs incurred by a patent attorney who is a partner of the same law firm that does the legal representation are actually refundable as «necessary expenses» in accordance with Art. 3 lit. a CostR.

Now, what will be first: The end of the 20y term of the patent, or the judgment? Holding a bet, anyone?

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_006 | Main hearing of 16 November 2020

(1) AstraZeneca AB
(2) AstraZeneca AG
./.
Sandoz Pharmaceuticals AG

Panel of Judges:

    • Dr. Rudolf RENTSCH
    • Prisca VON BALLMOOS
    • Marco ZARDI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of AstraZeneca:

    • Dr. Michael RITSCHER (MLL)
    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Sandoz:

ANNOUNCEMENT

PATENT IN SUIT

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Shifting is more than just a coincidence of copying and deletion/invalidation

Reading time: 6 minutes

Case No. O2019_004 | Decision of 6 October 2020 | ‘Ethereum / blockchain’

We have reported about the main hearing on this Blog here. Sunshine Software Development GmbH had sued FRIENDZ SA for alleged infringement of the Swiss part of EP 1 151 591; see EPO Register and Swissreg for further information. The patent has lapsed on 13 January 2020, after 20 years.

Standing to sue

The Plaintiff is not the patentee of EP 591, but rather only the exclusive licensee. The Plaintiff had provided a confirmation from the patentee that it had the right to enforce the patent (‘, […] das Klagepatent gegen Dritte gerichtlich durchzusetzen.’). The FPC held that this is sufficient evidence for Plaintiff’s standing to sue, and that there is no need to provide the full license contract.

That seems pretty straight forward, right?

But what does ‘enforcing’ a patent actually imply? Note that Plaintiff’s request was only for information and accounting in first place, as a basis for calculating and collecting damages later. However, no injunctive relief had been requested. I feel one might well have discussed whether ‘enforcing’ implies collection of damages(?). Anyway, this was apparently not an issue here.

Infringing act(s)
DevP2P

The decision gives a nice wrap-up of the essentials of the Ethereum blockchain in ¶ 22, apparently based on a party expert opinion of Björn Scheuermann. See Wikipedia for an overview about Ethereum in English language. Peer administration with Ethereum is governed by DevP2P.

Defendant had made an ‘Initial Coin Offering‘ back in 2018, utilizing the Ethereum block chain: 392m Friendz token had been emitted, and 22’868 units of the crypto currency Ether (ETH) had been collected.

Plaintiff argued that the Ethereum blockchain, in certain situations, would infringe EP 591. Defendant had argued that he could not be held liable for what decentralized computing and storage means do. These actions would not be attributable to the Defendant. The FPC did not buy into that. The Defendant had emitted Friendz token that essentially relied on the Ethereum blockchain. It does not matter that the decentralized computing and storage means are not owned by the Defendant.

An interesting aspect of this could have been the question of how to deal with parts of the Ethereum blockchain outside of Switzerland; see ¶ 23. But this was left undecided because the Ethereum blockchain was held to not infringe EP 591 anyway; see below.

Yet another interesting aspect had apparently been argued only belatedly, i.e. at the main hearing, well after the closure of the file: Defendant argued that the ‘certain situations’ within the Ethereum blockchain are only theoretically conceivable, i.e. might have happened accidentially; but Plaintiff had failed to establish that such a scenario actually did occur, in Defendant’s view. The FPC did not consider this (interesting) argument any further, but rather only held that it was belated; see ¶ 24.

now, what is ‘shifting of data’?

Claim 1 requires that

the data storage means (C) shift data […] between the data storage means (C).

In a nutshell, the whole case is about proper construction of the term ‘shifting of data’. The parties apparently did not dissent on the meaning of ‘shifting data’ in a general sense, i.e. that shifting of data necessarily involves two sub-steps, namely copying the data to another location and deleting or invalidating it at the first location. However, the parties dissented on the following example that ‘might’ occur in the Ethereum blockchain:

Fig. 3 of Björn Scheuermann’s opinion)

There may be data storage units A, B, C and D that are connected via existing connections (extended lines) or between which a connection can be established in the future (dashed line). The data storage unit A fails, i.e. it no longer reacts (in time) on requests from data storage unit C. This unit then tries to establish a connection with another data storage unit D to which it was not previously connected. After the connection is established with D, the data storage unit C notes that the data storage unit D does not currently contain all data that was stored in the failed data storage unit A. This data, which is also redundantly stored at C, is copied by C to D. Thus C and D have the same data, and D has the same data as the failed data storage unit A. In Plaintiff’s view, this is a ‘shifting’ of data: The data previously stored at A are no longer accessible there (for C), i.e. invalidated, and they were copied to D.

The FPC disagreed. The two sub-steps of invalidation and copying must be carried out within the same operation in order to constitute a ‘shift of data’, i.e. when a shifting operation is triggered in a computer system, both sub-steps are necessarily carried out by the computer system. The computer system executes the copying of the data to a new storage location and it carries out the deletion or invalidation of the data at the old storage location. If only one of these two steps is executed by the computer system, it is a simple deletion or a simple copying step. The two sub-steps must be performed as part of a (shifting) operation, and they must be performed because of this shifting operation being triggered.

In the event of a data storage device failure, data may be accidentially deleted or invalidated. However, this accidential failure and the resulting loss of data is not a step that is performed by a computer system due to a triggered shifting operation.

Accordingly, the decision holds that no data is being shifted in the Ethereum blockchain according to claim 1 when properly construed, i.e. the complaint was dismissed.

The decision is still appealable.

UPDATE 12 November 2020:

The decision has been appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_004 | Decision of 6 October 2020 | ‘Ethereum / blockchain’

Sunshine Software Development GmbH
./.
FRIENDZ SA

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dany VOGEL
    • Christoph MÜLLER

Judge-rapporteur:

    • Dany VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Simon HOLZER (MLL)
    • Andreas ASCHERL (K. A. L & E), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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Essentials of claim construction

Reading time: 7 minutes

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

DISCLOSURE NOTICE

Hepp Wenger Ryffel is involved in this matter on behalf of Alcon.

Hoya logo

HOYA had lodged nullity proceedings against Alcon re EP/CH 2 002 803 B1; see the European Register and Swissreg for further bibliographic information. Don’t be misled by the reference to EP 2 002 801 at various occasions in the decision (including the operative provisions); that’s a typo.

Alcon logo

The invention of EP 803 relates to intraocular lenses (IOLs), more particularly to cartridges used to inject IOLs into an eye. This is reflected in claim 1 of EP 803 as granted, broken down into distinct features, as follows:

Claim 1 of EP 803

1.1 An intraocular lens injector cartridge (10), comprising:
1.2 a body (12) having an internal lumen (15);
1.3 a tubular nozzle (14) having an outer wall (36) and an opening (18),
1.3.1 the nozzle projecting distally from the body,
1.3.2 the opening being fluidly connected to the internal lumen of the body;
1.3.3 and wherein
a) the nozzle opening is defined by an extended canopy (20, 20’, 20″)
b) projecting distally from a plane of the opening (18, 18’, 18″)
c) at least partially encircling the opening;
1.4 at least one peripheral protrusion (22) extending laterally from the outer wall of the nozzle proximally from the opening;
1.4.1 the at least one peripheral protrusion (22) is spaced proximally from the plane of the opening so as to provide an insertion depth limitation and prevent full insertion of the cartridge tip, in use.

added subject-matter?

The decision holds that the combination of features 1.3.3 b), 1.4.1 and 1.3.3 c) is based on two different embodiments, and that feature 1.4.1 itself is based on an intermediate generalization; the decision further holds that this also applies to the auxiliary requests (¶ 39).

These issues of (non-)complicance with the requirements of Art. 123(2) EPC are very case-specific, and I do not believe they are of broader interest beyond the case at hand. An appeal is currently pending at the Supreme Court.

But there are quite some other aspects in the decision that I find interesting.

comments on the expert opinion

The parties had been given the chance to the comment on the judge-rapporteur’s expert opinion in writing, within a time limit fixed by the court. But what if a party does not comment in writing: Is that party prevented from pleading at the main hearing on that issue? The decision holds that this is not the case. However, the decision also holds that it contravenes the equality or arms not to submit a position in writing within the time limit set by the court, but to argue extensively on the expert opinion at the main hearing.

Even though it had no consequences in this case, it appears that unconditional withholding of comments on the expert opinion is a risky thing to do.

The skilled person

There is an interesting remark in the decision about how the knowledge and expertise of the skilled person is to be determined. The decision holds that the relevant technical field of the invention is to be determined in first place, and, as a second step, the specific competencies of the skilled person in that technical field are to be determined.

That’s pretty straight-forward, isn’t it? The decision refers to S2017_001 (¶ 4.4) in this respect. In that case, it had been held that the definition and knowledge of a skilled person that had been proposed by the parties appeared to be correct in view of the technical problem defined in the patent itself.

But what if a party argues for obviousness starting from a ‘closest’ prior art document that is not in the same technical field, and/or the objetive technical problem is not anymore the one that is stated in the patent? Let’s take a washing machine as an example. The invention is all about a very energy-efficient motor — in a washing machine.

No washing machine on board, I guess.

Let’s further assume that such a very energy-efficient motor had been described in the prior art, but only in a publication relating to the space station ISS. Such a document cannot be ignored as a potentially promising springboard; see e.g. S2017_001, ¶ 4.6. Now, starting from that publication, the skilled person being an engineer of washing machines would immediately recognize what a perfect fit this motor is for his daily business, i.e. washing machines. The invention is just plainly obvious(?). But that can’t be it, right? Starting from a technologically pretty unrelated ‘closest’ prior art document, the skilled person cannot rightly be considered to be skilled in the field where the solution or the invention lies. Rather, I feel the skilled person should then be from the field where this ‘closest’ prior art stems from (i.e., in my example above, an aerospace engineer). And when you ask an aerospace engineer for alternative uses of the motor, he quite likely will not come up with washing machines.

This is at least my understanding of how the BoA of the EPO would approach such a situation; see e.g. T 25/13 (¶ 2.3).

It will be interesting to see a case being decided at the FPC where this issue is decisive.

claim construction

The decision provides further guidance on how the specific embodiments are to be considered in claim construction. The FPC had previously held that the claims are to be construed such that the embodiments are literally covered; I had long been troubled by the generality of the statement, see e.g. this Blog here.

In the present decision, the FPC clarified that this should be so ‘in case of doubt’.

More specifically, the decision holds that the rule of ‘literal coverage’ shall only apply when the claim can be reasonably construed in several ways. In such cases, the claim shall be construed such that the specifically disclosed embodiments are literally covered.

A much appreciated and highly relevant clarification about claim construction, in line with e.g. X ZR 35/11 (‘Zugriffsrechte’) of the German Supreme Court.

UPDATE 6 November 2020:

The decision has been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

HOYA Surgical Optics GmbH
./.
Alcon AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Philipp RÜFENACHT
    • Dr. Tobias BREMI

Judge-rapporteur:

    • Dr. Philipp RÜFENACHT

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Michael RITSCHER (MLL)
    • Livia ANDERMATT (MLL)
    • Dr. Claudia BIBUS (Blum), assisting in patent matters
    • Joel HOCHREUTENER (Blum), assisting in patent matters
    • n/a (Eisenführ Speiser), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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How often can you kick a can?!

Reading time: 3 minutes

Case No. O2020_006 | Order of 16 September 2020 | ‘IML Verfahren mit elektrostatischer Haftung’

Rotho logo

Rotho Kunststoff had lodged invalidation proceedings in April 2020 against Keter Plastic with respect to EP(CH) 2 121 271 B1; see the European Register and Swissreg for further bibliographic information. Keter countersued for infringement. However, with the present order, the FPC held that Keter’s countersuit is inadmissible — because this claim is already pending in court.

Keter logo

Indeed, the same parties have locked jaws in parallel infringement proceedings O2017_024. The order holds that in the co-pending case the same patent and the same attacked embodiments are at stake. Note that the main hearing in that matter is scheduled to take place on 22 October 2020, i.e. the formal closure of the file has already occured.

The decision holds that the present counter-claim for infringement is already comprised in Keter’s co-pending infringement action. The fact that an even more (verbally) limited claim of EP 271 is invoked in the present proceedings does not change anything in this respect.

So, for once the question is not: «Who is kicking my can?!», but rather how often you may kick it. The answer is: Once, with one and the same foot.

When both cases finally unfold, it will be interesting to learn more about Rotho’s motivation to lodge invalidation proceedings only in early 2020 when they had relied on invalidity as a plea in defense in parallel proceedings for about 2.5 years. We shall see.

UPDATE 6 November 2020:

The decision has been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_006 | Order of 16 September 2020 | ‘IML Verfahren mit elektrostatischer Haftung’

Rotho Kunststoff AG
./.
Keter Plastic Ltd.

Panel of Judges:

    • Dr. Tobias BREMI
    • Dr. Ralph SCHLOSSER
    • Dr. Markus MÜLLER

Judge-rapporteur:

    • n/a

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Rudolf RENTSCH (IPrime)
    • Ernst BREM (IPrime)
    • Otto-Martin WILLY (IPrime), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Axel STELLBINK (Stellbrink), assisting in patent matters

ORDER IN FULL

PATENT IN SUIT

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Too much is too much …

Reading time: 2 minutes

Case No. O2020_013 | Decision of 14 September 2020 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper; Rückweisung’

This case has been remitted by the Supreme Court only for a decision on the apportionment of costs. For the factual background of the matter, see this Blog here.

It has been a highly interesting case that brought some clarification about how partial waiver are to be dealt with while FPC proceedings are pending (and which raises a lot of new questions). But costs have been extremely high, in particular in view of a value in dispute of only kCHF 200. Refundable costs for legal representation have been fixed at kCHF 30, according to the tariff. Defendant’s expenses for the assistance of patent attorneys amount to more than kCHF 300. On the other hand, the plaintiff had asserted expenses for the assisting patent attorneys of only kCHF 50, i.e. slightly above the tariff for legal representation, but not out of the ordinary. Accordingly, the FPC reduced the refund for the assistance of patent attorneys to only kCHF 50.

I recall a case in Dusseldorf where the judges were not amused when confronted with a value in dispute that was ‘obviously’ too low; see here. The FPC is apparently more foregiving … 😉

UPDATE 6 November 2020:

The decision has not been appealed / is final now.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_013 | Decision of 14 September 2020 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper; Rückweisung’

Stemcup Medical Products AG
./.
(1) Implantec GmbH
(2) Endoprothetik Schweiz GmbH
(formerly ImplanTec Schweiz GmbH)

Panel of Judges:

    • Dr. Christoph WILLI
      • Dr. Tobias BREMI
      • Dr. Daniel ALDER
      • Frank SCHNYDER
      • Dr. Kurt SUTTER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)
    • Dr. Bruno MEYER (KellerSchneider, formerly Schneider Feldmann), assisting in patent matters
    • Dr. Jens OTTOW (Rentsch), assisting in patent matters

Representative(s) of Respondent / Plaintiff :

DECISION IN FULL

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A very serious soap opera

Reading time: 6 minutes

Case No. O2019_001 | Hearing of 16 September 2020

Frosch® product

As mentioned earlier on this Blog here, Werner & Mertz (well known e.g. for its brands Erdal® and Frosch®) has sued Compad Consulting GmbH for lack of entitlement to a patent application, i.e. unlawful usurpation thereof.

The patent application at stake is EP 2 592 134; the patent application is licensed to the Swiss start-up company Good Soaps. See the European Patent Register for further bibliographic information.

The file wrapper at the EPO is telling: The complaint of 9 January 2019, the reply of 20 September 2019 (including all appendices) as well as the comments on the rejoinder of 5 December 2019 are available online. The instruction hearing took place on 8 July 2019 — without a settlement being reached.

There had already been some attention in the media a while ago (see e.g. here and here), when the defendant had lodged a press release. Apparently, the plaintiff now also approached the media shortly before the hearing. SRF reported again about this case yesterday in Regionaljournal Zentralschweiz:

Frankly, I am not going to participate in reading the tea leafs here, trying to conclude something from the fact that the inventor has waived her right to be publicly mentioned; or that the applicant is not Good Soaps itself, but rather a consulting firm that has given a license to Good Soaps. These things per se may well happen for good and serious reasons. And I cannot readily spot any troll-like behaviour, either.

UPDATE 18 September 2020:

For some strange reason, the designation of inventor is available in the online file wrapper at the EPO, contrary to R. 144 (c) EPC.

In the end, for an assignment action to be successful, a plaintiff has to prove the following:

    1. that he actually made the invention on his own (when, where and how);
    2. how the defendant was made aware of this invention; and
    3. how this invention is reflected in the application(s) in suit.

See e.g. O2012_001 (r 27) and O2015_009.

The main hearing took place earlier today, and it was definitely one worth attending.

Good Soaps product

Ms Regine SCHNEIDER had met with some people of Werner & Mertz on 27 August 2009 in Mainz, in particular with Mr Karl-Heinz QUADE. That is one of the few things on which the parties can agree. At that time, Ms SCHNEIDER had been employed by Kolb, as head of the business unit New Business. I understood from the pleadings that Ms SCHNEIDER had been decruited on the very next day, i.e. 28 August 2009, and that she was immediately released from work because Kolb closed down the whole business unit. Accordingly, it will be decisive whether the invention — as claimed in the application at stake, or at least the basic concept thereof — had been communicated by Mr QUADE to Ms SCHNEIDER in that meeting.

Evidently, the content of this single meeting is of critical importance. Since there is only very limited written evidence in this respect (only an agenda or invitation, in my understanding), witness testimony will likely be decisive. Accordingly, Ms SCHNEIDER was deposed as a witness today. To the best of my knowledge, this was actually the first time that a witness has been publicly deposed in a main hearing at the FPC. Ms SCHNEIDER was first deposed by the President and the judge-rapporteur, and both parties were given the opportunity to ask follow-up questions. This was actually a pretty smooth exercise.

Frog’s home turf?

But, maybe, Mr QUADE remembers things differently(?). Unfortunately, we did not learn more about this meeting from his perspective today. I understood from the pleadings that the defendant had pressed criminal charges against Mr QUADE, for some wrongdoing in connection with the present matter, and that he was therefore prevented from being deposed as a witness in the hearing today.  The FPC has apparently initiated proceedings for judicial assistance of the German authorities, to have Mr QUADE deposed in Germany. Defendant’s counsel requested the FPC to reconsider this procedural move: Even if Mr QUADE would confirm all that has been asserted by the plaintiff by now, it would still not be sufficient for the plaintiff to fulfill all three criteria as outlined above. Note that judicial assistance might easily take a further 4-30(!) months.

The further course of the proceedings is not yet cast in stone. If the FPC abstains from having Mr QUADE deposed, the judgment would be issued as a next step. If Mr QUADE is being deposed, the parties will again have an opportunity to comment on his testimony, be it in writing or yet another hearing.

Reported by Martin WILMING

Credit: Header image by Karsten Lamprecht from Pixabay

BIBLIOGRAPHY

Case No. O2019_001 | Hearing of 16 September 2020

Werner & Mertz
./.
Compad Consulting GmbH

Panel of Judges:

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

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ANNOUNCEMENT

PATENT APPLICATION IN SUIT

Clean version of the DREX, i.e. the version for which the EPO indicated its intention to grant a patent:

 

Application as filed, published as EP 2 592 134 A2:


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Cluster Failure During a Hearing about Cluster Failure

Reading time: 4 minutes

Case No. O2019_004 | Hearing of 30 June 2020

We first reported here that a blockchain infringement case might be pending at the FPC with some involvement of MLL. Shortly thereafter, on June 4, 2020, the official announcement followed and revealed that Sunshine Software Development GmbH had taken action against FRIENDZ SA for alleged infringement of the Swiss part of EP 1 151 591; see EPO Register and Swissreg for further information. Note that the patent has lapsed on 13 January 2020, after 20 years.

FRIENDZ SA describes itself as a start-up that aims to

[…] decentralize the digital advertising industry.

According to their website,

[…] brands can use Friendz Coins to access digital advertising.

These coins seem to be at the center of the present case.

As noted previously, little information is publically available about Sunshine Software Development.

EP 591 is directed to data access and management. From what could be gathered from the arguments made at the hearing, the subject matter of EP 591 seems to be relevant at least to Ethereum, and possibly other blockchain platforms. Much of the discussion related to infringement seemed to evolve around whether defendants shifted («verschieben») or replicated data, or what the difference between the two would be. Specifically, the two independent claims 1 and 30 of EP 591 comprise the following features:

the data storage means shift data redundantly stored in the system independent of an access of the computer unit as a function of the determined parameters of data transmissions between the data storage means.

redundantly stored data is shifted independently of an access of the computer unit (CL) to the data as a function of the determined parameters of data transmissions between the data storage means.

Apparently, the judge-rapporteur had concluded in his expert opinion that defendants did not shift data, and consequently did not infringe on claims 1 and 30.

We gathered from the pleadings that plaintiffs alleged a replication and subsequent deletion of data, which might realize a shift of data. Defendants appeared to argue that accidental deletion of redundantly saved data would not constitute a shift of data, and that replication was done for data safety reasons.

Speaking of accidental things related to IT,  the hearing was up to a rocky start when the monitors of the judges would not work. But a FPC hearing on blockchain was not going to be stopped by some measly IT issue – or was it? The IT gods stepped up their game and also let the microphones fail, and at a later point the projector. But even when every piece of IT had apparently failed at least once during the hearing, the President shrugged off the cluster failure — «[…] ein Clusterausfall!» —, determined to continue the hearing. Cluster failure is apparently not only a potential blockchain issue …

As usual, the parties were asked whether they would be interested in settlement talks under the court’s guidance. Both parties affirmed, though plaintiffs indicated that while the amount of compensation may be negotiable, the validity and infringement would not be.

As always, the public was not allowed to stay for the settlement talks, and it remains to be seen if a judgement will ever see the light of the day.

Reported by Philippe KNÜSEL and Martin WILMING

BIBLIOGRAPHY

Case No. O2019_004 | Hearing of 30 June 2020

Sunshine Software Development GmbH
./.
FRIENDZ SA

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dany VOGEL
    • Christoph MÜLLER

Judge-rapporteur:

    • Dany VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Simon HOLZER (MLL)
    • Andreas ASCHERL (K. A. L & E), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

PATENT IN SUIT

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