Obviousness is a question of law – but the court will only pick up lines of attack that have been asserted

Case No. O2016_009 ¦ Decision of 18 December 2018 ¦ ‘Durchflussmessfühler’

Reading time: 11 minutes

HEADNOTE

Art. 226, 229 CPC New facts, amendment of patent claims.

If in a patent infringement proceeding the plaintiff files before the instructional hearing a reply limited to the defense of the validity and no pleadings take place at the instructional hearing, the plaintiff may submit new allegations of fact, and therefore also amended patent claims, in the completed reply filed after the instructional hearing without having to meet the requirements of art. 229 para. 1 CPC.

Please find some background information about the subject-matter at stake on this Blog here, and a report about the main hearing of 29 October 2018 on this Blog here.

Vyaire logo

In brief, Hamilton Medical AG alleged infringement of its Swiss patent CH 701 755 B1 (see Swissreg for further bibliographic details) by some of imtmedical AG‘s iFlow sensors. Note that Vyaire has recently taken over imtmedical’s ventilator and related consumables business; see imtmedical’s press release here.

The only independent claim 1 of CH’755 as granted reads as follows:

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

Inofficially translated to English language:

Flow sensor (10) with a passage defining a cylindrical housing (10) with a first passage opening (13) and a second passage opening (29); a flow resistor (23) arranged in the passage of the housing which divides the housing into a first and a second housing part (11 and 27); a first terminal (17) having a connection to the interior of the first housing part (11); and a second terminal (19) having a connection to the interior of the second housing part; characterised in that the first and second terminals (17, 19) are spaced apart on the same housing part.

Fig. 1 of CH’755 surely helps to understand what the invention is about:

Fig. 1 of CH 701 755 B1

The defendant denied an infringement, and argued for nullity as a plea in defense.

The verbal limitation of the patent

This is what the hn is all about. Imagine a plaintiff / patentee in infringement proceedings who is confronted with a plea for nullity in defense: When is his last chance to formally assert his patent only to a more limited and presumably valid extent?

First, it is important to understand how the FPC conducts the proceedings. If the defendant raises a plea for nullity in his answer to plaintiff’s statement of claim in infringement proceedings, the FPC invites the plaintiff to file a reply which is strictly limited to only the nullity aspects of the case. What follows next is an instructional hearing. In preparation of that hearing, the limitation of plaintiff’s reply to only the nullity aspects is to assure that the court has a single exchange of opinions at hand for both infringement and nullity. If the case moves on after the instructional hearing, it is again up to the plaintiff to complete his reply. Thereafter, the defendant provides the rejoinder re both infringement and nullity. This is the end of the regular exchange of briefs in which the parties can present facts and arguments without the need to comply with Art. 229(1) CPC (novae). However, the plaintiff may of course comment on new allegations and facts presented by the defendant in his rejoinder — within a deadline set by the FPC (typically two weeks, extendable by one further week; see this Blog here), or under the unconditional right to be heard (within 10 days).

The below is an illustrative summary of this chain of events:

Plaintiff Defendant
Statement of Claim
re infringement
Answer
w nullity plea in defense
First reply
re alleged nullity only
Instructional hearing w/o pleadings
Second reply
re infringement and nullity
Rejoinder
re infringement and nullity
Comments
on new factual allegations in the rejoinder, if any
Judge rapporteur’s expert opinion

Note the subtitle to the second reply in the above: The decision holds that the plaintiff may present arguments and facts in his second reply after the instructional hearing not only relating to infringement aspects, but rather also to the nullity aspects of the case.

In the defendant’s view, the plaintiff thus had three chances to deal with validity / nullity of the patent, i.e. in his initial statement of claim and both his replies. The FPC disagreed: There is no reason for a plaintiff to deal with nullity in the beginning. How would he even do so in the absence of any knowledge of the defendant’s potential arguments? Thus, the FPC held that both parties had exchanged their views on both aspects of the case for the first time only after plaintiff’s first reply (limited to nullity). With the second reply and the rejoinder, both without limitations re novae, the double exchange of briefs is concluded.

Undoubtedly, an amended claim is to be considered a new fact (decision 4A_543/2017 of the Supreme Court, ¶2.3); as such, it would be an inadmissible novum after the normal exchange of briefs.

The plaintiff ‘verbally limited’ the claim only in his second reply. The defendant argued that this second reply was limited to only infringement aspects; it should only complement the first reply that had already dealt with nullity. Defendant argued that this was established practice at the FPC. Again, the FPC disagreed: There was not an established practice of the FPC in that sense.

now, what?!

Interestingly, the former President Dieter Brändle had apparently indicated in the instructional hearing that the patent could not be asserted in a more limited form any more after the instructional hearing. Defendant argued that it is against good faith if the limitation was now accepted nevertheless. However, the decision holds that it is up to the whole panel of judges to finally rule on admissibility of new facts; Mr. Brändle only gave his personal, preliminary opinion on this issue at that time. When the defendant had been invited to provide his rejoinder, this came along with an explicit note to deal with plaintiff’s reply as a whole, and that the whole panel of judges would finally decide on admissibility of the limitation of the patent. Thus, the defendant had no procedural disadvantage.

On a sidenote, I am wondering what the last point of time would be for a patentee / plaintiff to limit the claim when faced with a full-fledged counterclaim for nullity, i.e. when there are two parallel tracks of claim and counterclaim:

Plaintiff
Defendant
Statement of Claim
(re infringement)
Answer
re claim
Counterclaim
(re nullity)
Answer
re c’claim
Instructional hearing w/o pleadings
Reply
re claim
 
Rejoinder
re claim
Reply
re c’claim
Rejoinder
re c’claim
  Comments
on new factual allegations in the rejoinder re c’claim, if any
Judge rapporteur’s expert opinion

Would the plaintiff’s reply after the instructional hearing then be limited to the infringement part, and the final chance to limit the claim be the rejoinder re c’claim? This remains to be seen in a case to come.

General remarks on claim construction

The decision summarises certain key aspects of claim construction in ¶25 (and, later on, in ¶47). I do readily agree with most of it, but stumbled upon the following:

When case-law refers to ‘broadest interpretation’ of claim features,15 the feature must still be capable of fulfilling its purpose in the context of the invention. This means that the claim must not be interpreted under its wording, but also not in such a way that embodiments are covered which do not achieve the inventive effect.

15 FPC, decision O2013_008 of 25 August 2015, ¶4.2 — ‘elektrostatische Pulversprühpistole’ [see this Blog here]

The decision cites ample case-law, but there is no fn in the last sentence. Now, where does that come from? The sentence somehow reminds me of hn 3 of the ‘Spannschraube’ decision of the German Federal Supreme Court, X ZR 85/96 of 2 March 1999. The German Supreme Court had held:

The scope of protection of a European patent cannot be extended to embodiments which wholly (or to an extent which is practically insignificant) waive the success sought by the patent.

However, the Swiss Supreme Court had to assess the same subject-matter shortly thereafter, and explicitly disagreed; 4C.348/1999 of 12 April 2001: What had been considered to be no infringement in Germany, was well an infringement in Switzerland!

The Swiss Supreme Court did not see any reason to deviate from the literal and technically plausible meaning of the feature — even though an explicit object of the patent that had been recited in the specification was not achieved by such embodiments, i.e.  the use of very short clamping screws (see EP 0 319 521 B1, col. 1, l. 54-57):

Der Erfindung liegt die Aufgabe zugrunde, eine Rohrschelle der eingangs genannten Art zu schaffen, die sich auch mit einer sehr kurzen Spannschraube gut handhaben und leicht schliessen lässt.

It remains to be seen whether the present decision might indicate a gradual departure from the old Spannschrauben approach of the Swiss Supreme Court.

Alleged nullity 

The claims at stake can be summarized as follows, structured into features:

a) Flow sensor (10) with
b) a passage defining a cylindrical housing (10) having a first through opening (13) and a second through opening (29);
c) a flow resistor (23) arranged in the passage of the housing, which divides the housing into a first and a second housing part (11 and 27);
d) a first connection point (17) having a connection to the interior of the first housing part (11);
e) a second connection point (19) having a connection to the interior of the second housing part;
f) the first and second connection points (17, 19) being arranged at a distance from one another on the same housing part;
i) claim 4 as granted:
wherein flanges are provided on the first housing part (11) and on the second housing part (27) for connecting the housing parts with flange pressure surfaces (15, 16, 31, 32) are formed;
j) first variant of claim 10 as granted:
wherein the connections run partly in the flange pressure surfaces,
and/or
k) second variant of claim 10 as granted:
[wherein the connections] exit through the flange pressure surface as openings on the sealing surface side (17, 19, 21, 33, 35, 37) .

Features a) – f) correspond to claim 1 as granted (marked in bold in the above); the whole set of features, i.e. a) – f) and j) – k), corresponds to the claim as limited with plaintiff’s second reply. Don’t get confused by the missing features g) and h): The parties referred to these features in their feature analysis; but they are irrelevant for the present decision since they only relate to dependent claims 2 and 3 which are not at stake.

The decision holds that claim 1 as granted lacks novelty over document E10, i.e. (JP S61-205023); see Fig. 1:

JP S61-205023, Fig. 1

Next, the decision assesses and acknowledges novelty of the more limited claim over E1 (US 6,585,662 B1) which lacks features j) and k). Defendant had also argued that a prior use of the device of E1 had occured (prior use ‘Jones’). However, the decision holds that this prior use does not need to be assessed any further: Defendant had argued that the prior use disclosed a device according to the teaching of E1. Thus, the decision holds that any such prior use would necessarily also have lacked features j) and k).

Novelty over E10 (JP S61-205023; see above), E11 (JP H02-55123) and E12 (JP H03-44627) is also acknowledged in the decision.

Moving on to the assessment of obviousness, the decision emphasizes that it is up to the party that alleges nullity of a patent to make the relevant allegations. The court only examines whether the grounds put forward lead to the invalidity of the patent. Even though obviousness is a question of law, the relevant factual assertions must be made by the party that asserts nullity. In the following, therefore, the decision only deals with the assessment of obviousness starting from document E2 that has been referred to as ‘closest prior art’ by the defendant, i.e. US 4,083,245.

Features f), j) and k) are missing in E2.

With E2 as closest prior art, the decision holds that documents E7 (DE 32 25 114 C1, erroneously referred to as DE 32 25 115 C1 in the decision), E8 (US 1,768,563 A) and E9 (JP H03-21735 U) fail to render the limited claim obvious — mainly because these devices are made from metal / intended for use in high pressure applications, contrary to flow sensors in the medical field which are typically made of plastic, using die casting methods.

In sum, the more limited claim that the plaintiff had submitted with his second reply was thus held to be valid.

Infringement

Defendant most fiercely contested that the adult version of the flow sensors has flange pressure surfaces and, even if there were flange pressure surfaces, that the connections from the connection points to the inside of the first/second half of the housing run partially into or through the flange pressure surfaces. Defendant referred to the computer tomographic images that had been submitted by the plaintiff:

CT image of the flange of an attacked embodiment

The above figure shows a cross-section through the flanges of the two halves of the housing. The flow resistor which is clamped between the flanges is marked with 23. Identifiers 45 and 47 mark a groove and comb structure. Defendant argued that the gas-tight connection is made exclusively via the groove/comb structure. However, the flange surfaces would not touch each other (red arrows in the above figure); only the planes of the comb and groove that protrude perpendicularly from the flange surface would be in contact (white arrows in the above figure). Defendant argued that this is intentional because it allows flow resistors of different thicknesses to be used without the housing halves having to be designed differently, contrary to the teaching of the patent in suit. Since, by definition, flange pressure surfaces would have to lie against each other under pressure, flange pressure surfaces are missing in the adult version, in the defendant’s view. And even if the area in which the flow resistor is trapped by the flanges (marked with a yellow arrow in the figure above) were still called the ‘flange pressure surface’, no connections would occur there in any case. Defendant referred to the below figure in this respect (with the white squares / annotations added by the court):

Flange, annotated by the court

The above figure again shows a cross-section of an adult version of the flow sensor. The thin vertical line is the flow resistor; identifier 33 refers to one of the connections to a connection point which seems to end on the right because it runs diagonally in the Z plane. The decision holds that ‘flange pressure surface’ and ‘flange surface’ are used as synonyms in the patent. A flange pressure surface in the sense of the claim is the surface of a flange facing away from the body part to which the flange is attached and serving to connect the body part to another body part, whereby the connection need not necessarily be made over the entire surface.

Thus, the flange pressure surface of the attacked embodiment runs over the entire width of the flange, i.e. in the above figure from point a) to point b). Consequently, the decision holds that the connections from the connection points to the inside of the first/second housing parts also run through the flange pressure surfaces, as can be seen in the figure above.

The decision holds that the defendant may have improved the teaching of the patent in suit, and the improvement might even be patentable. This does not, however, lead out of the scope of protection of the earlier patent (cf. Art. 36 PatA). In sum, the decision holds that the version for adults is literally covered by the limited claim of the patent. Likewise, the version for children is also held to be literally covered by said claim.

Wording of the injunctive relief

The defendant objected to the wording of the request for injunctive relief, for that it is too indefinite and merely recites the wording of claim features that are under dispute between the parties (such as e.g. the term ‘flange pressure surface’). The decision holds that the features are defined in the reasons of the decision beyond any doubt, so that a mere factual check by the competent authorities is well sufficient. Thus, it is neither necessary nor helpful for each and every feature to be defined in the prayer for relief itself.

Again, this reminds me a bit of the German approach where the mere claim wording is typically used in prayers for injunctive relief, and the exact scope is then to be deduced from the reasons of the decision. I do have some symphathy for the FPC’s approach that keeps the verdict clean and simple, with all the potential ambiguities being resolved by way of definitions given in the reasons.

In sum, the defendant was ordered to abstain from further use of the infringing embodiments, and to provide information and accounting concerning the same.

The parties commented on the decision with the following press releases:

The decision is not yet final; an appeal is pending at the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_009 ¦ Decision of 18 December 2018 ¦ ‘Durchflussmessfühler’

Hamilton Medical AG
./.
imtmedical AG

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

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

DECISION IN FULL

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CH 701 755 B1

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Paying annuities may have unexpected consequences …

Case No. O2018_018 ¦ Order (excerpt) of 4 January 2019 ¦ ‘Klageüberfall’

Reading time: 3 minutes
HEADNOTE

Art. 106(1), 107(1) lit. e CPC:

Allocation of costs.

The patentee who deletes their patent from the patent register after the filing of a nullity action is liable to pay the procedural costs even if they have not been forewarned before the filing of the action.

The hn highlights in no uncertain terms the risk associated with maintaining patents of doubtful validity in Switzerland: Even in case of a nullity action out of the blue, and even if the patent is then withdrawn immediately, the patentee / defendant still has to bear the procedural costs.

Frankly, this does not come as a complete surprise. The tendency has already been clear since O2015_010, decision of 5 January 2016. The present order again confirms that Swiss law (unlike Germany, cf. § 93 DE-ZPO) does not provide for an obligation to issue a prior warning letter. With reference to the practice of the cantonal court of Zug (A3 2010 58, ‘Geburtsgel’), the order holds that clapping all costs on the defendant is justified if the defendant had

[…] given the impression by his pre-litigation conduct that he had not had the patent cancelled on mere warning.

Noteworthy, the present order holds that this conclusion can already be drawn from the mere existence of a formally valid patent. This is because the patent is cancelled if the renewal fees due are not paid on time (Art. 15(1) lit. b PatA). It would be unreasonable to assume that the patentee would pay the annuities on time but cancel the patent on first demand.

And, in fact, the patentee in the present matter did not respond immediately to the (informal) notification of the action by cancelling the patent, but rather offered the plaintiff a licence. This suggests that even in the case of a pre-litigation request, the patent would not have been cancelled immediately.

Feller logo

The order has been published in highly truncated form only. But still, I am reasonably sure about the patent at stake. Searches in Swissreg give only a single perfect fit, i.e. EP(CH) 1 204 164 B1 of Feller AG; see Swissreg. Annuities had been validly paid until 30 November 2018, but the patent had been withdrawn shortly before that date, with letter of 6 November 2018 (published in Swissreg on 8 November 2018).

The invention of EP’164 apparently is all about a screwless connecting terminal for electrical conductors, with more secure releasability of the conductors. Claim 1 reads as follows:

Device (1) with screwless terminals for connecting electrical conductors, with at least one spring comprising an elastic terminal arm (7) and a brace (2) which encloses it, where a contact tongue (8) of the terminal arm (7) cooperates with a retaining part (5) of the brace (2) so as to maintain a conductor introduced between the contact tongue (8) and the retaining part (5), where the brace (2) leaves the contact tongue (8) at least partially accessible on both sides of the retaining part (5), so that it can be acted upon from outside the brace (2) on both sides of the retaining part (5), characterized in that the brace (2) comprises a base (3) and a lateral wall (4) the upper part of which is bent so as to form the retaining part (5) in such a way that this retaining part (5) is only connected through its longer side with the lateral wall (4), and that the latter comprises at least one recess (11) in the vicinity of the extremity of the contact tongue (8).

All this is more readily understandable with Fig. 1 of EP’164 at hand:

EP 1 204 164 B1, Fig. 1

Unfortunately, I failed miserably to track the plaintiff of this case. If someone out there does know more, please let me know.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_018 ¦ Order (excerpt) of 4 January 2019 ¦ ‘Klageüberfall’

n/a
./.
Feller AG

ORDER (EXCERPT)

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EP 1 204 164 B1

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David Bensoussan and Rock dental AG have settled

Case No. O2017_026 ¦ Order of 11 September 2018

I had reported about the ownership dispute in summary proceedings between between David Bensoussan and Rock dental AG on this Blog here.

Except for the complaint, nothing had surfaced in main proceedings O2017_026, though. See the full complaint below. I now came across an order that had been issued on 11 September 2018: The parties apparently found an amicable solution. The order had not been published by the FPC, but the terms agreed upon by the parties do not contain any confidentiality obligation. It is rare that one can catch a glimpse of how cases are settled at the FPC: The full order is available in the file wrapper at the EPO in relation to the European phase of the patent application concerned. In brief, the parties agreed as follows:

  • Marc Fehlmann and David Bensoussan are joint inventors.
  • Rock dental AG shall be the sole owner of the patent applications / patents.
  • David Bensoussan shall be reimbursed for assignment of his share of rights in the patent applications / patents with a 20% share of the license income.

As a result of the settlement, case O2017_026 was written off as settled.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_026 ¦ Order of 11 September 2018

David Bensoussan ./. ROCK dental AG

Judge(s):

  • Lara DORIGO

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Guillaume FOURNIER (MLL)
  • Christophe SAAM (P&TS), assisting in patent matters

SUMMARY PROCEEDINGS
Case no.: S2017_008
Decision of: 27 December 2017

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The correct case no. is S2017_008, as indicated on the title page. Don’t be misled by case no. S2017_002 in the header of pages 2 ff of the decision; that’s a typo.

MAIN PROCEEDINGS 
Case no.: O2017_026
Order of: 11 September 2018

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The order is publicly available in the European Patent Register since 17 January 2019.

COMPLAINT AS FILED

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The writ is publicly available in the European Patent Register since 29 December 2017.

PATENT APPLICATION IN SUIT

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Exhaustive discussion through all instances: The list of grounds for nullity is exhaustive.

Case No. 4A_415/2018 (Supreme Court) ¦ Decision of 7 December 2018, on appeal against O2017_016 (FPC) ¦ Decision of 12 June 2018

Reading time: 5 minutes

The setup of this case is pretty simple:

Salmon Pharma as the defendant in SPC infringement proceedings neither disputed validity of the basic patent EP 0 716 606 B1 of Genzyme Corporation, nor that the subject-matter of the SPC C00716606/01 is actually covered by the basic patent or that the attacked embodiment (sevelamer carbonate) is covered by the SPC. Rather, the defendant (only) alleged that the SPC was invalid because the IPI wrongfully allowed re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

Following-up on a decision granting interim injunctive relief (see the detailed report on this Blog here), the FPC had confirmed with a decision in main proceedings that the list of grounds for nullity of an SPC as set forth in Art. 140k PatA is exhaustive; the allegedly wrongful reinstatement was thus held to be no valid ground of nullity (see this Blog here).

The question as to whether the lists of grounds for nullity in Art. 26 and Art. 140k PatA are exhaustive had indeed not yet been explicitly decided by the Supreme Court before. However, the present judgment refers to an indication in 4A_52/2008, ¶2.2, according to which the grounds for invalidity for the certificate are listed in Art. 140k PatA. Furthermore, in application of the Patent Act of 1888, the Federal Supreme Court had already held that the grounds for invalidity of patents were exhaustively listed therein (28 II 309, ¶5). I just love to read such old decisions. Amazingly straight to the point; and the type face is so stylish:

Decision 28 II 309 of 2 May 1902 (snapshot)

Unsurprisingly, the Supreme Court takes the case-law of the Court of Justice of the European Union (ECJ) on Art. 15 of Regulation (EC) No 469/2009 (or Regulation (EEC) No 1768/92) into account, in view of the legislator’s explicit intent to bring the Swiss rules into line with European law.

However, the Supreme Court could not infer anything from the ECJ’s case-law in support of Salmon’s position. Rather, the Supreme Court confirms the FPC’s reasoning: The ECJ only affirmed the nullity of certificates due to the non-observance of standards which are not explicitly mentioned in Art. 15 of Regulation No 1768/92 by referring to Art. 15 as interpreted in view of Art. 3.

For example, in C-127/00 — Hässle ./. Ratiopharm, the ECJ held that failure to comply with the transitional regime of Art. 19 of Regulation No 1768/92 may result in the certificate being invalid. The requirement under Art. 19 is to be understood as an implicit substantive requirement additional to the conditions laid down in Art. 3 of the Regulation. A certificate which was granted even though an initial marketing authorisation had already been granted before the date laid down in Article 19 of the Regulation is therefore null and void; ¶¶84-92).

Likewise, in C-195/09 — Synthon ./. Merz Pharma, the ECJ held that Art. 3 of Regulation No 1768/92 necessarily referred to a product falling within the scope of that regulation within the meaning of Art. 2 thereof. A certificate granted for a product falling outside the material scope of the Regulation should be considered null and void; ¶56.

It cannot be inferred from these judgments that the list of grounds for nullity in accordance with Art. 15 of the Regulation is not to be understood as exhaustive. On the contrary, the ECJ stated that it could not be inferred from either the wording or the history of Art. 15 of the Regulation that the list of grounds for nullity of the certificate referred to therein was not exhaustive (Synthon, ¶55; Hässle, ¶¶90-91).

The Supreme Court thus held that the lists of grounds for invalidity of both Art. 26 and Art. 140k PatA cannot be supplemented. Consequently, in the context of a patent nullity action or a nullity action relating to an SPC, only the grounds provided for in these provisions may be invoked. The Supreme Court notes in passing that legal certainty demands for this, too.

Angesichts dessen, dass es sich bei der Nichtigkeit eines Patents bzw. Zertifikats um eine schwerwiegende Folge handelt, entspricht dies dem Gebot der Rechtssicherheit.

Next, the Supreme Court assessed whether non-compliance with the deadline for filing the request pursuant to Art. 140f PatA or wrongful reinstatement pursuant to Art. 47 PatA, could be subsumed under a ground for invalidity pursuant to Art. 140k PatA. However, this is neither apparent nor does it result from the relevant case-law of the ECJ.

Finally, the Supreme Court notes that SPCs and patents are granted by order of the IGE (144 III 285, ¶3.2). Nullity under Art. 26 and Art. 140k PatA is not to be mixed up with the administrative contestability or nullity of the dispositions of the IPI on which the grant of a patent or SPC is based. In other words, the fact that the catalogues of grounds for invalidity under the PatA are exhaustive does not mean that these dispositions cannot be contestable or void, which must be assessed according to general principles of administrative law.

Dass die Kataloge der patentrechtlichen Nichtigkeitsgründe abschliessend sind, bedeutet […] nicht, dass diese Verfügungen nicht anfechtbar bzw. nichtig sein können, was nach allgemeinen verwaltungsrechtlichen Grundsätzen zu beurteilen ist.

Interestingly, the Supreme Court explicitly left the question open whether the decision of grant of the SPC (or the earlier decision of 4 April 2005 concerning reinstatement) could have been challenged by the appellant, as the FPC had assumed: Any relevant time limit had expired since long, anyway. On the other hand, the nullity of a decision must be observed by all authorities applying the law at all times (137 I 273, ¶3.1; 133 II 366, ¶¶3.1-3.2; 132 II 342, ¶2.1; 129 I 361, ¶2; each with further references to case-law).

Incorrect administrative acts are usually not null and void, but only contestable; and they become legally effective when not challenged. Invalidity, i.e. absolute ineffectiveness, of an order is only accepted if it is afflicted with a profound and substantial defect, if this serious defect is obvious or at least easily recognisable and if the legal certainty is not seriously jeopardised by the acceptance of invalidity. Deficiencies in content only rarely result in the nullity of an order, in exceptional cases; this requires an extraordinarily serious deficiency. The main grounds for invalidity are the functional and factual lack of competence of an authority and serious procedural irregularities (such as the fact that the person concerned did not have the opportunity to participate in the proceedings). If an order is not legally binding in this sense, any authority dealing with the matter must comply with it at all times and ex officio (see, inter alia, 138_II_501, ¶3.1; 137 I 273, ¶3.1; 136_II_489, ¶3.3).

Salmon had argued that reinstatement was granted ‘arbitrarily and contrary to the clear and decades-long practice’ of the IPI. Again, the Supreme Court left undecided whether the IPI indeed wrongly allowed reinstatement because the alleged misjudgment could not be a defect that leads to the nullity of the decision. In particular, the Supreme Court held that any such deficiency would be neither obvious nor easily recognisable: By definition, reinstatement is a remedy when something went wrong, i.e. in the event that a time limit prescribed by the law was not observed.

Finally, in simple terms, the Supreme Court notes: The IPI had come to the conclusion that the conditions for reinstatement pursuant to Art. 47 PatA were met. The appellant may not share this view, but the administrative act is still not null and void.

Das IGE ist zum Schluss gekommen, dass die Voraussetzungen für die Wiedereinsetzung gemäss Art. 47 PatG gegeben waren. Die Beschwerdeführerin mag diese Einschätzung nicht teilen; ein nichtiger Verwaltungsakt liegt jedoch nicht vor.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_415/2018 (Supreme Court) ¦ Decision of 7 December 2018, on appeal against O2017_016 (FPC) ¦ Decision of 12 June 2018

Salmon Pharma GmbH

./.

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

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Salmon Pharma:

  • Dr. Robert BRINER (CMS)

Representative(s) of Genzyme, Sanofi-Aventis:

SUPREME COURT DECISION

On appeal against decision O2017_016 of 12 June 2018:
4A_415/2018 7 December 2018
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SECOND FPC DECISION

Main proceedings, following up on decision S2016_009 of 4 July 2017:
O2017_016 12 June 2018
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FIRST FPC DECISION

Summary proceedings:
S2016_009 4 July 2017
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BASIC PATENT

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Riendeau ./. Zehnder: Heat exchanged?

Case No. 4A_277/2018 ¦ Decision of 01 October 2018 (Supreme Court) on appeal against O2015_009 ¦ Decision of 21 March 2018 ¦ ‘Wärmeaustauschelement: Feststellung der gemeinsamen Berechtigung an der Anmeldung’

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

Please see this Blog here for a discussion of the underlying decision of the FPC. In brief, it is all about an assignment action of Marcel Riendeau against Zehnder Group International AG, concerning two European patent applications, i.e.:

Both EP2 and EP3 had been filed in Zehnder’s name only; the plaintiff had been designated as inventor. The plaintiff had partially suceeded in first instance when the FPC held that the parties are jointly entitled to both patent applications.

On appeal, the plaintiff objected that the facts had been wrongly established in the first instance decision in various aspects, that the burden of proof had been incorrectly allocated and that the FPC had not dealt with the plaintiff’s entitlement to a transfer of the patent applications based on a contractual undertaking.

To cut a long(er) story short: The Supreme Court did not agree and dismissed the appeal. The FPC’s decision is thus final now, and it remains to be seen how the parties get along with their joint entitlement to both EP2 and EP3.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_009 ¦ Decision of 21 March 2018 ¦ ‘Wärmeaustauschelement: Feststellung der gemeinsamen Berechtigung an der Anmeldung’

Marcel Riendeau
./.
Zehnder Group International AG

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUPREME COURT DECISION

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FPC DECISION

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EP 2 829 834 A1
(referred to as EP2 in the decisions)

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EP 2 829 836 A1
(referred to as EP3 in the decisions)

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Supreme Court confirms FPC’s decision O2015_008 — Omega’s appeal dismissed

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC)¦ ‘Balancier de montre’

Reading time: 4 minutes

As to the background of this matter, please see the report about the main hearing on this Blog here and the discussion of the first instance decision of the FPC on this Blog here.

In brief, Omega had alleged infringement of its EP 1 837 719 B1; see the EPO Register and Swissreg for further bibliographic details of the patent in suit. With decision of 14 March 2018, the FPC had rejected Omega’s claim for infringement while Tudor’s / Detech’s counterclaim for invalidity had been allowed; EP(CH) 1 837 719 B1 had been declared invalid.

The Supreme Court now dismissed Omega’s appeal, i.e. confirmed the FPC’s decision. EP(CH) 1 837 719 B1 is thus finally declared invalid.

The issues dealt with by the Supreme Court in the decision, in brief:

  1. Age of a prior art document 

On appeal, Omega has argued that the FPC took an unrealistic piece of prior art into account in the assessment of inventive step. Indeed, the FPC had considered a document that was published already about a century ago, i.e. US 759,914. In view of the evolution of watchmaking since then, Omega considered it unrealistic that such a document was actually considered as a starting point in the assessment of inventive step. Consequently, Omega alleged a violation of Art. 56 EPC.

The Supreme Court did not buy this argument. It is held in no uncertain terms that everything that had been made publicly available — including old documents — forms part of the prior art. One cannot exclude a document from consideration in the assessment of inventive step just because of its age; see ¶3.1.3.

Écarter un document de ceux que consulterait l’homme de métier en raison de son ancienneté reviendrait à priver les brevets ayant dépasé un certain âge de toute valeur dans le cadre de l’analyse de l’effet invenif. Un telle pratique ne saurait être déduite de l’art. 65 CBE.

Reference to some case-law of the Boards of Appeal of the EPO did not help either: The mere age of a document has not been decisive in T 479/00, T 366/89, T 1000/92 and T 334/92. The Supreme Court notes that the obsolescence or outdatedness of a technology had been the key issue in these decisions, which excluded the respective documents from consideration by the skilled person. Apparently, no such case had been established by the appellant in the present matter.

  1. Incompatibility of technical teachings

The balance wheel of US 759,914 has inertia blocks that must have been placed from the inside, as claimed by the patent in suit; see the screw head on the inner side of the felloe in the figures below.

But what is still missing here is the stud (‘plot’) according according to the patent in suit. Omega argued that the skilled person would not have added studs to the balance of US 759,914 in view of the risk to impair the automatic adjustment of its temperature dependent moment of inertia, which is the sole purpose of this invention. However, the Supreme Court holds that this is not in agreement with the fact findings of the FPC, and thus did not consider this argument any further.

  1. Choice of the closest prior art

The FPC had not explicitly motivated its choice of US 759,914 as the closest prior art in the assessment of inventive step in accordance with the problem-and-solution approach.

Kind reminder …

And the Supreme Court indeed acknowledges that it would have been desirable if it had done so.

Ainsi, il eût été souhaitable que la juridiction précédente détaille la première étape de l’approche problème-solution comme elle l’a fait pour les autres étapes de son examen.

But still, in view of the FPC’s detailed discussion of how the skilled person had arrived at the invention starting from US 759,914 without inventive merit, it became sufficiently clear how close both inventions actually are, and why US’914 thus is a reasonably chosen closest prior art.

  1. Late filed auxiliary requests / claim limitations

Omega had filed yet another, even more limited auxiliary request (AR3) with the response to the expert opinion of the judge-rapporteur. The FPC had not admitted this request into the proceedings anymore, with reference to O2015_012.

Omega had challenged this on appeal. But while this appeal has been pending, the Supreme Court ruled on the appeal against O2015_012 — and backed the practice of the FPC in this respect; decision 4A_543/2017 of 08 May 2018, see this Blog here. Accordingly, Omega did not succeed with this argument, either.

In sum, Omega’s appeal was dismissed and EP(CH) 1 837 719 B1 is now finally declared invalid.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC) ¦ ‘Balancier de montre’

Omega S.A.

./.

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

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of appellant / plaintiff:

Representative(s) of defendants / respondents:

SUPREME COURT DECISION 

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FPC DECISION 

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PATENT IN SUIT

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Go with the flow

Reading time: 3 minutes

Case No. O2016_009 | Hearing of 29 October 2018

iFlow sensor

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

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

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

Fig. 1 of CH 701 755 B1

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

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

In our understanding, the expert opinion of the judge-rapporteur had held that the patent as granted was not valid. However, the judge-rapporteur apparently also held that the patent would be valid in a more limited extent, and that it would still be infringed to that extent. The plaintiff had invoked the patent to that limited extent in the second part of his reply, after the instructional hearing. Defendant firmly denied that this ‘verbal limitation’ (verbale Einschränkung) was admissible and argued that the case had to be dismissed if claim 1 of the patent as granted was invalid.

UPDATE 10 February 2019:

A previous version of this post noted that the patentee invoked the patent to a more limited extent only after receipt of the expert opinion of the judge-rapporteur. This was wrong. He did so already in the second part of his reply, after the instructional hearing. This has been corrected in the above.

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

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

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

Reported by Tina VOCI and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_009 | Hearing of 29 October 2018

Hamilton Medical AG
./.
imtmedical AG

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

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

Representative(s) of Defendant:

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

CH 701 755 B1

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Who fell into a burning ring of fire … ?

Case No. O2018_007

Reading time: 2 minutes

Isn’t it funny how one sometimes just stumbles upon interesting things?

The FPC requested acceleration of pending opposition/appeal proceedings at the EPO concerning EP 2 581 003 B1; see EPO Register and the online file wrapper. Apparently, main proceedings with case no. O2018_007 are pending at the FPC.

The patent at stake is about an apparatus for cooking food products. More information about the patentee’s product ‘Feuerring’ can be found on the patentee’s homepage.

The only independent claim 1 of EP’003 as granted read as follows:

An apparatus for cooking food products, said apparatus comprising a firebox (4) with an axially symmetrical form, the firebox (4) having a box wall (6) and a box edge (8), which defines the box wall, and being intended to accommodate a combustion material which, during combustion, outputs the thermal energy required for cooking, and having a continuous heating surface (10) which runs substantially at a right angle to the axis (A) of the firebox (4), surrounds an opening (12) arranged about the axis and is intended for the direct cooking of the food products, wherein between the box wall (6) and the heating surface (10) there is arranged a false floor (14) which is intended to support the combustion material, characterised in that the false floor (14) and the box wall (6) have an outlet opening (24 or 22) each for removing the residue of the combustion material from the apparatus.

This can be best understood with the figures of EP’003 at hand:

Two opponents lodged an opposition against the grant of EP’003, i.e. Nouvel AG and Ofyr BV. The patent has been maintained in first instance by an Opposition Division of the EPO with interlocutory decision of 18 July 2017, in slightly amended form as follows:

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Opponent Nouvel AG lodged an appeal, and the FPC now requested to accelerate these appeal proceedings. Interestingly, two separate briefs with reasons of appeal have been filed: One by Felber & Partner, the other one by Manitz Finsterwald. Patentee / respondent has filed an answer.

Update 05 October 2018:

Opponent/appellant Nouvel filed a reply on 01 October 2018.

Not much is known about the actual subject of the proceedings pending at the FPC, except for the party representatives: Simon Holzer (MLL) and Andri Hess (Homburger). In view of MLL‘s involvement in the matter, Mark Schweizer apparently stepped back and Christian Hilti is chairing these proceedings.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_007

[tbc] ./. [tbc]

Panel of Judges:

  • Dr. Christian HILTI
  • [tbc]
  • [tbc]

Judge-rapporteur:

  • [tbc]

Court Clerk:

  • [tbc]

Representative(s):

PATENT IN SUIT

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REQUEST FOR ACCELERATION

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Claim dismissed, counterclaim dismissed: Huge expense, no recompense

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

The FPC handed down the decision in this remarkable litigation about a highly complex mechanical writing system. Please see this Blog here for a report about the main hearing and some background information.

What follows is a rather lengthy post, but this is due to the complexity of the case, both procedurally and technically.

  1. Party positions in a nutshell

It started off with Guenat‘s request that Swiss Finest‘s CH 704 790 B1 be declared invalid; note that the patent has been limited in March 2017 and re-published as CH 704 790 C1, see Swissreg for further bibliographic details. Guenat argued that the invention had been made by Frédéric Garinaud, an independent inventor who is quite renown for being the mastermind behind the Harry Winston Opus 8. Frédéric Garinaud had filed a patent application for a writing instrument; this patent application has then been assigned to Guenat and a patent was granted; EP 2 479 648 B1, see Swissreg and European Patent Register for further bibliographic details.

In Guenat’s view, the subject-matter of the Swiss Patent was invented by Frédéric Garinaud before it was used by Swiss Finest, and Frédéric Garinaud never transferred his patent rights to Swiss Finest. Guenat further argued that the invention of the Swiss Patent is obvious in view of a PowerPoint Presentation which had been sent to a third party without confidentiality obligation. Frédéric Garinaud being the only creator of the technical teachings contained in Garinaud’s European Patent and having transferred his patent rights to the plaintiff, Guenat argues that the defendant has no right to the Swiss Patent.

Swiss Finest countersued and requested that Guenat’s EP’648 be declared invalid, or assigned to Swiss Finest. Swiss Finest argued that in autumn 2010, Frédéric Garinaud had only a vague idea but had not yet completed an invention at that time. The invention was only made later with the substantial contribution of Swiss Finest’s employees after Frédéric Garinaud’s appointment as Creative Director, and any rights in the invention had been assigned to the defendant by employment contract.

Later, Swiss Finest argued that if Frédéric Garinaud was nevertheless considered to have already conceived the invention in the fall of 2010, the patent rights in this invention had been transferred to a simple partnership founded by Fabrice Thueler (owner of Swiss Finest) and Frédéric Garinaud in the preparation of a company ‘Garinaud SA’ which was foreseen to exploit the invention in dispute. Swiss Finest held thus to be the legitimate owner of the rights in the invention which is the subject of the Swiss Patent and, since the invention of the European Patent is the same, it is also entitled to the European Patent. Further, the subject-matter of the Swiss Patent was new and inventive in Swiss Finest’s view, since the PowerPoint presentation had not become publicly available because it had been sent only under an implicit confidentiality obligation. Even if one were to consider that the presentation was to be considered as prior art, the subject-matter of the Swiss patent is nonetheless inventive.

As if all this was not confusing enough, the case was spiced up further with Swiss Finest’s counterclaim for infringement by the Mechanical Fountain Pen RMS05:

Fountain Pen RMS05 by Richard Mille

This product has some amazing mechanics; see yourself:

In brief:

It’s complicated. Very complicated.

  1. The parties’ requests — and why they failed

The stage is set with a rather complicated factual situation. But at least some of the request could be dealt with quite straight forward by the court:

  1. Nullity for lack of entitlement

Guenat had requested that Swiss Finest’s Swiss patent be annulled based on Art. 26(1) lit. d PatA, i.e. for lack of entitlement. However, such request can only be brought by the entitled person; Art. 28 PatA. Guenat alleged that Frédéric Garinaud transferred ‘full and complete ownership’ of the European patent application to Guenat. Even though the inventions in both (Guenat’s) European and (Swiss Finest’s) Swiss patent may well be the same, this did not help. Frédéric Garinaud specifically assigned only the European patent application to Guenat, but not to the invention itself.

Guenat’s request for declaration of nullity based on Art. 26(1) lit. d PatA was thus held inadmissible for lack of standing.

  1. Nullity for lack of inventive step

Novelty of Swiss Finest’s Swiss patent after partial surrender was not contested anymore. But Guenat alleged obviousness over the PowerPoint presentation that had been sent to Hamdi Chatti of Louis Vuitton in 2010, in further view of i) F. Lecoultre, Les Montres Compliquées, 3ème éd. Neuchâtel 1985; ii) Huguenin / Guye / Gauchat, Les Echappements, 2ème éd. Neuchâtel 1974; and/or EP 1 221 383 A1.

Louis Vuitton logo

With respect to the PowerPoint presentation, the parties dissented whether or not it had been sent to Hamdi Chatti with an implied confidentiality obligation. The last page of the PowerPoint presentation mentioned ‘breveté’ (‘patented’), even though the Swiss patent application had not yet been filed. Frédéric Garinaud was apparently aware of this faux-pas; he wrote to his patent attorney:

I confess I anticipated the patent application.

The decision holds that under the specific circumstances there was no implicit confidentiality obligation associated with the PowerPoint presentation.

It then remained undisputed that the PowerPoint presentation was the closest prior art. However, quite a lot of differentiating features were missing. The missing features could be grouped into three aspects, and three partial problems are dealt with in the decision:

amovibilité the removable endpiece allows wide access to the pen holder, and indirectly to the other components housed in the front part of the writing instrument, avoiding manipulation by the writing tip;
échappement the choice of an escapement as a control mechanism offering a simple and proven solution to control energy release, while producing an audible indication;
verrouillage cooperation between the actuator and the locking system to unlock the power source to release the writing tip when the actuator is actuated, without additional action.

This is the only picture from the PowerPoint presentation in the decision:

PowerPoint presentation

As to the locking system (‘verrouillage‘), the decision holds that this was readily obvious (if not implicitly disclosed already in the PowerPoint presentation). Likewise, the escapement (‘échappement‘) is held obvious in further view of Lecoultre:

Lecoultre, p. 113

However, the removable endpiece (‘amovibilité‘) was more tricky, and the decision holds that this was not obvious from the cited prior art. When seeking a solution to the problem of replacing the ink cartridge, the skilled person would not have thought of a removable endpiece. Instead, he would have e.g. made a pen in which the writing tip as such is detachably mounted on the body or tip, like e.g. in EP'383:

EP 1 221 383 A1, Fig. 1

Thus, the subject-matter claimed in Swiss Finest’s Swiss patent was held to be non-obvious over the cited prior art.

  1. Nullity for yet further reasons

Guenat argued for nullity of Swiss Finest’s Swiss patent for yet further reasons.

First, an alleged undue extension of subject-matter (Art. 26(1) lit. c PatA) in the course of the partial surrender according to Art. 24 PatA; see the B1 and the C1 version of the Swiss patent below.

Second, Guenat alleged a lack of enabling disclosure; Art. 26(1) lit. b PatA.

Without setting out all the details here, both these alleged grounds of nullity failed for apparently straight forward reasons.

  1. Entitlement to Guenat’s European patent

The invention disclosed in the European Patent was already disclosed or was obvious to a large extent from the PowerPoint Presentation prepared and sent by Mr. Garinaud on November 17, 2010; see above — with the only exception of the removable endpiece. This removable endpiece was first mentioned by Frédéric Garinaud’s patent attorney François-Régis Richard (e-patent). In an email dated December 9, 2010, he wrote to Frédéric Garinaud:

I am also realizing that for the change of the cartridge, it would probably be simpler to disassemble the pen by its front part to avoid exposing the watch mechanism in the back.

This undisputedly was the first note of the removable endpiece. Whether the rights to this creative contribution were transferred to Frédéric Garinaud, as alleged by Guenat, could remain open. In any event, it had not been alleged that François-Régis Richard transferred the rights to Swiss Finest. Rather, Swiss Finest only held that the invention was made by Frédéric Garinaud when he was employed at Swiss Finest — which could not be true given the PowerPoint presentation and the email of December 9, 2010.

The decision thus holds that the subject-matter of claim 1 of the Swiss patent was created by Frédéric Garinaud before its use by Swiss Finest — with the exception of the removable endpiece which was proposed by François-Régis Richard without having assigned his rights in this contribution to the defendant.

In anticipation of this outcome, Swiss Finest apparently modified its position later and alleged that it had obtained rights in the European Patent by virtue of a simple partnership agreed between Frédéric Garinaud and Fabrice Thueler in preparation of a company ‘Garinaud SA’ to be established.

However, this was not convincing, either. The decision holds that it is unclear how the right to the patent, even if it had been transferred to the simple partnership, should finally reside with Swiss Finest. Members of a simple partnership are joint owners of the assets, with the consequence that they can only dispose of them jointly. In any event, according to the defendant’s allegations, Frédéric Garinaud and Fabrice Thueler were the partners of the simple partnership. A patent right could therefore only belong to them jointly. However, the defendant did not allege that Frédéric Garinaud agreed to transfer the right to the patent to it.

  1. Injunctive relief

Swiss Finest’s request for injunctive relief in respect of the ‘Mechanical Fountain Pen RMS05’ failed for a lack of concreteness of the attacked embodiment. See e.g. this Blog here (O2012_004, ‘Leichtbeton’) for further information on the necessary concreteness of a request for injunctive relief.

Swiss Finest did not argue for literal infringement, but rather only for infringement under the Doctrine of Equivalents (DoE); see below. Still, the request for injunctive relief merely recited the wording of the claims, and was thus held inadmissible.

  1. Infringement by the Mechanical Fountain Pen RMS05
RMS05 (annotated)

Even though the request for injunctive relief was held inadmissible, the court still dealt with had to assess whether or not the RMS05 was infringing. Confused? I will clarify this later; see below.

It was undisputed that the RMS05 did not comprise a removable endpiece (’embout amovible’). However, Swiss Finest alleged that the function of the removable endpiece is to allow the writing tip to be removed from the pen body to allow an ink cartridge to be inserted or replaced. Swiss Finest further alleged that the fountain pen holder (indicated by the white arrow in the annotated figure) can be unscrewed and removed from the body using a wrench formed in the cap of the pen to place and replace an ink cartridge. In Swiss Finest’s view, the removable fountain pen holder inserted into the endpiece of the RMS05 amounts to an infringement under the DoE.

First, the court carefully defined the function of the removable endpiece in the context of the invention and reverted to ¶ [0015] of the Swiss patent:

It can still be noted that, to have access to the pen holder, the endpiece is screwed on the body and can therefore be unscrewed. The ink supply can then be changed by disassembling the pen holder and the intermediate holder.

The decision holds that this function does not exist in the RMS05. The endpiece is not removable and the disadvantage of the access to the fountain pen holder still remains in the RMS05. The fact that the fountain pen holder of the attacked embodiment can be removed does not change anything in this respect, because according to the Swiss Patent, after unscrewing the endpiece and facilitating access, the fountain pen holder is also removed to replace the cartridge.

As can be seen in the below screenshot of this video on YouTube, the fountain pen holder can be gripped with the cap and removed to replace the ink cartridge. However, the endpiece is fixed (indicated by the white arrow in the screenshot below).

RMS05, replacement of ink cartridge

Therefore, there is no removable endpiece in the RMS05, neither literally nor under the DoE, because the function of the removable endpiece is not realized in this pen. Thus, already the first question of the questionnaire established with O2014_002 was denied.

In sum, neither party succeeded with any attack. This somehow reminds me of the ‘Hornberg salute’:

‘Hornberger Schiessen’
  1. What the decision might be cited for
  1. Competency for assignment of all national validations of a European patent

Swiss Finest had requested that Guenat’s European patent be assigned to them. This was interpreted by the court as to concern all national validations of the meanwhile granted patent. To the best of my knowledge, it had been mentioned for the first time in O2015_009, ¶ 2.1, that the FPC is competent to decide also on ownership of foreign rights — without any in-depth discussion because it had not been decisive anymore in that case.

Not so here. The court now took the chance to set out its reasoning in any detail in ¶ 10 of the decision. The question of ownership of IP rights does not fall within the exclusive jurisdiction under Art. 22(4) of the Lugano Convention; see decision C-288/82 of the ECJ, Ferdinand M.J.J. Duijnstee ./. Ludowijk Goderbauer and further literature in fn 1 of the decision. Under Swiss national law, international jurisdiction for disputes relating to intellectual property rights is governed by Art. 109 CPIL. However, only validity and infringement actions are mentioned, but not assignment actions. Jurisdiction for actions for the assignment of an IP right, in particular a patent, is therefore determined in accordance with the general rule of Art. 2 CPIL, according to which the Swiss judicial or administrative authorities of the defendant’s domicile are competent. As the plaintiff (defendant of the counterclaim) is domiciled in Switzerland, the FPC is also competent for counterclaims relating to the transfer of foreign patents.

  1. Right to accounting

The court re-visited the right to accounting based on Art. 66 lit. b PatA in view of critical voices in the aftermath of O2013_008; see ¶ 58 of the decision (note that fn 33 erroneously refers to O2012_008). However, the decision explicitly confirms the FPC’s practice that in case the court finds infringement there is a substantive entitlement to information and accounting based on Art. 66 lit. b PatA.

  1. Request for accounting with reference to a trademark / product name

As mentioned above, the request for injunctive relief was held inadmissible for lack of concreteness. Still, the court did the whole exercise of infringement analysis. It had to because of the request for accounting. The request for accounting referred to the ‘Mechanical Fountain Pen RMS05’. Such a description would be perfectly inadmissible in a request for injunctive relief, because the product name could be changed at any time. But not so in a request for accounting. The name of a product that has been sold in the past cannot be changed anymore:

However, in the case of conduct that has taken place in the past, it is permissible to specify the allegedly infringing object by means of a type designation or trademark. Such a designation cannot be changed for the past and one therefore knows exactly which product — namely in this case the product previously offered under the designation ‘Mechanical Fountain Pen RMS05’ — is the subject of the information request.

I guess we will see more such simplified requests for accounting in the future.

  1. No mixing-up of functions of features in the test for infringement under the DoE

There is an interesting general remark in ¶ 63 of the decision, i.e.:

One cannot reasonably expand the function of a claim feature and argue that this expanded function is fulfilled by another feature of the attacked embodiment, when the same element (penholder) with the same functionality (can be dismantled to replace the cartridge) is found in the invoked patent in parallel to claimed features, and independently of it (removable endpiece).

Reported by Martin WILMING

IMAGE CREDIT

Header image (Hôtel de Ville de Neuchâtel, Salle du Conseil Général) courtesy of Lucas Vuitel – ArcInfo.

BIBLIOGRAPHY

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine
./.
Swiss Finest SA

Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Philippe DUCOR
  • Christoph MÜLLER
  • Dr. Ralph SCHLOSSER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Nathalie TISSOT (Etude Tissot)
  • Christophe SAAM (P&TS), assisting in patent matters

Representative(s) of Defendant:

  • Christoph KÜNZI (CBK)
  • Tarik KAPIC (Bovard), assisting in patent matters

DECISION IN FULL

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CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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FRÉDÉRIC GARINAUD

Harry Winston Opus 8

Frédéric Garinaud apparently is a master of complicated mechanics. He developed the Harry Winston Opus 8, a manually-wound watch with a ‘digital’ display of the hours and minutes.

The numbers appear only on demand, when a slide on the right side of the watch is activated. I could not help but do some further research on the Opus 8. It was a limited edition of 50 pieces only, on 9 July 2018 seen at luxurybazaar.com with a price tag of US$ 350’125,–. A somewhat fair deal in view of a purported retail price of US$ 449’700,–.

www.luxurybazaar.com; July 9, 2018

Get to know Mr Garinaud in this video, talking about the Opus 8:

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No further grounds for nullity of an SPC beyond Art. 140k of the Patent Act

Case No. O2017_016 ¦ Decision of 12 June 2018 ¦ “Verletzung Ergänzendes Schutzzertifikat; Sevelamer”

Following-up on a decision granting interim injunctive relief (reported here), the present decision in main proceedings now confirms this outcome. I have reported about the hearing in main proceedings on this Blog here.

As indicated earlier, the defendant neither disputed validity of the basic patent EP 0 716 606 B1 of Genzyme Corporation, nor that the subject-matter of the SPC C00716606/01 is covered by the basic patent or that the attacked embodiment (sevelamer carbonate) is covered by the SPC. Rather, the defendant (only) alleged that the SPC is invalid because the office wrongfully granted re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

The FPC now confirms that the list of grounds for nullity of an SPC as set forth in Art. 140k PatA is exhaustive. The alleged wrongful reinstatement is thus no valid ground of nullity. In particular, the decision refers to the dispatch of the Federal Council when the SPCs had been enacted, i.e. the note that Art. 140k is to define the grounds for nullity:

Artikel 140k Nichtigkeit: Absatz 1: Neben dem Erlöschen bzw. der Sistierung des Zertifikats müssen auch die Gründe festgelegt werden, sie seine Nichtigkeit herbeiführen.

CJEU’s logo

Further, the decision reviews the CJEU’s case law and notes that the grounds for nullity according to Art. 15 of the EU SPC Regulation 469/2009 have never been held to be an open list. Rather, the CJEU only interpreted Art. 3, violation of which is referred to as a ground for nullity in Art. 15 of the EU SPC Regulation.

The FPC notes that the defendant could have appealed the decision of reinstatement (Art. 48 ff APA in the version of 09 December 2003), together with the decision of grant of the SPC – but failed to do so. The decision is thus formally final, and the defendant has to live with it.

If there is a take away message for practitioners in this decision, then it is surely to watch out for fresh grants (not only of SPCs, but also patents, trademarks, designs, etc.), to not miss the 30 days(!) time limit for an appeal; Art. 50(1) APA. This will be the only chance to fight against e.g. a wrongful reinstatement — which is more than you will ever get e.g. at the EPO where there is no such chance at all; but still, you need to act quickly.

Yet another interesting aspect of the decision is the assessment of the value in dispute. The parties heavily disagreed. Plaintiffs had considered it to be CHF 5m, while the defendant only estimated it to be CHF 500k. The FPC had thus to decide on this issue, too; Art. 91(2) CPC. Towards this end, it relied on some interesting rules of thumb:

  1. one third of the turnover of the originator’s product is replaced by the generic within about 2 years;
  2. the profit margin of a generic is 50%.

Based on these rules of thumb, and the plaintiffs’ own statement of an annual turnover in Switzerland of CHF 2.25m p.a., the FPC considered the the value in dispute as CHF 750k, for the roughly two years of protection at stake before the SPC will finally lapse in February 2019.

UPDATE 18 July 2018:

The decision has been appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_016 ¦ Decision of 12 June 2018 ¦ “Verletzung Ergänzendes Schutzzertifikat; Sevelamer”

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

./.

Salmon Pharma GmbH

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Requester:

Representative(s) of Respondent:

  • Dr. Robert BRINER (CMS)

DECISION IN FULL

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BASIC PATENT

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The Supreme Court sets the ‘infringement test’ aside — but with a ‘Swiss touch’

Supreme Court
Case No. 4A_576/2017 | Decision of 11 June 2018 | Appeal against decision O2017_001 of 3 October 2017

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.
Gilead's Truvada
Gilead’s Truvada®

Please see this Blog here for a summary of the first instance decision of the FPC.

Nullity of the supplementary protection certificate C00915894 has been at stake. The basic patent is EP 0 915 894 B1; see EPO Register and Swissreg. On a more general level, this case was all about what it needs for a product to be protected by a basic patent, which is a prerequisite for an SPC both in the EU (Regulation (EC) No. 469/2009, Art. 3 lit. a) and Switzerland (Art. 140b(1) lit. a PatA).

It was beyond dispute between the parties that the subject-matter of the SPC (tenofovir disoproxilfumarat + emtricitabin) is covered by the basic patent EP’894. The so-called ‘infringement test’ that had been applied in Switzerland since the Supreme Court’s decision BGE 124 III 375 – Fosinopril in 1998 was thus met. However, the CJEU explicitly disapproved the ‘infringement test’ with its decision CJEU C-322/10 – Medeva of 2011, and the plaintiff argued that the ‘infringement test’ should no longer be applied in Switzerland, either.

The FPC had held that it is not appropriate to change the practice. On the contrary, the Supreme Court did now exactly that.

In first place, the Supreme Court reviewed the practice of the CJEU which initially left it to the national courts to decide on what it meant to be protected by a basic patent. Essentially two lines of jurisprudence developed thereafter, i.e. the disclosure theory (‘Offenbarungstheorie’) and the infringement test (‘Verletzungstest’). Only later, the CJEU disapproved the ‘infringement test’; CJEU C-322/10 – Medeva.

The Supreme Court noted that the Swiss SPC legislation had been enacted with the explicit aim to make it materially the same as in the European Union. The ‘infringement test’ cannot achieve this aim anymore, and it thus cannot be maintained; ¶2.2.5-2.2.6:

Die Auslegung […] weicht konzeptionell ab von der Auslegung durch den EuGH. […] Das vom schweizerischen Gesetzgeber angestrebte Zeil, das Schutzniveau für das Institut der ergänzenden Schutzzertifikate  mit demjenigen im benachbarten Ausland in Einklang zu bringen, wird damit verfehlt. […] An  BGE 124 III 375 kann nicht festgehalten werden.


Noteworthy, the Supreme Court also briefly touched the IPI’s prior initiative to amend its SPC granting practice in light of the CJEU’s Medeva case law, and the positive feedback that had been received from (at least some of) the interested circles. The Supreme Court notes that this was a strong indication that the Swiss practice should indeed be changed, and the IPI’s initiative thus paid off. Still, it was good that the IPI’s initiative had been put on hold in view of the present proceedings. In my humble opinion, any change of practice while BGE 124 III 375 – Fosinopril was still formally applicable would have been premature. Just imagine the consequences if the granting practice had been changed and the Supreme Court later did not abstain from the ‘infringement test'(!), for any reason whatsoever. Dreadful.

Now, what is the test instead? Practitioners are familiar with the subtle twists in the various decisions of the CJEU. This is not further clarified in the present decision. Unsurprisingly, the Swiss Supreme Court essentially only summarizes the criteria of these decisions, ¶2.2.6:

Bezeichnet ein Grundpatent nur einen von zwei Wirkstoffen, kann ein Erzeugnis […] nicht als ergänzendes Schutzzertifikat beanspruch werden, wenn es aus zwei Wirkstoffen zusammengesetzt ist. Art. 140b PatG ist vielmehr […] so auszulegen, dass die Wirkstoffe des Erzeugnisses im Grundpatent beansprucht werden müssen, indem sie in den Patentansprüchen benannt werden, oder indem sich die Patentansprüche – im Lichte der Beschreibung ([…]) ausgelegt – zumindest stillschweigend, aber notwendigerweise auf diese Wirkstoffe beziehen, und zwar in spezifischer Art und Weise.

The ‘Swiss touch’

But the Supreme Court did not just change the practice. It did so with a smooth ‘Swiss touch’: Already granted SPCs shall not be affected by the change of practice. The Supreme Court held that, as a rule, formally final administrative decisions cannot be reconsidered or reversed on the basis of a change in case law. In the Supreme Court’s view, the public interest in equal treatment hardly exists in the context of an SPC, contrary to e.g. in social insurance issues. Apart from the fact that the number of SPCs — irrespective of their economic importance — is rather small, the purpose of granting them is precisely to grant privileges to their owners. If a change of the case law now restricts the conditions for granting SPCs in certain cases, the interests of the other market participants are given a higher weighting and the interests — including public interests in health care — are weighed up differently. However, this change in valuation and consideration of the interests involved does not justify the withdrawal of acquired legal positions, in the Supreme Court’s view; see ¶3.6. No national court in the European Union took this approach when the ‘infringement test’ had been abandoned, to the best of my knowledge.

Now, what is next? Respondent’s counsel already noted on Kluwer Patent Blog that it remains unclear how pending SPC applications shall be dealt with, but they suggested that the infringement test should also apply in these cases. I feel this could well be handled differently. No subjective right has yet been granted in these cases, and I cannot readily see an overriding interest of the applicants to still get SPCs granted contrary to the changed practice. To strike a balance, one might as well just give applicants a chance to amend their pending applications in view of the changed practice instead.

Reported by Martin WILMING

BIBLIOGRAPHY

Supreme Court
Case No. 4A_576/2017 | Decision of 11 June 2018 | Appeal against decision O2017_001 of 3 October 2017

Mepha Pharma AG
./.
Gilead Sciences Inc.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Dr. Matthias LEEMANN

Representative(s) of Plaintiff / Appellant:

Representative(s) of Defendant / Respondent:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)
  • Dr. Michael RITSCHER (MLL)

SUPREME COURT DECISION

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Inofficial English translation, as provided by Defendant’s Counsel on EPLAW Blog:

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FIRST INSTANCE DECISION

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THE BASIC PATENT

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Supreme Court confirms: No late amendments to an auxiliary request

Supreme Court
Case No. 4A_543/2017 | Decision of 08 May 2018 | ‘Appeal against decision O2015_012 of 29 August 2017

As to the background of this decision, I suggest to first have a look at the review of the first instance judgment on this Blog here.

AZ’s Faslodex

In (very) brief, AstraZeneca’s EP(CH) 1 250 138 B2 had been revoked for lack of inventive step over Howell in view of McLeskey. At the main hearing, AZ had further limited its third auxiliary request with an additional feature (marked-up below) as follows:

Use of fulvestrant in the preparation of a pharmaceutical formulation for the treatment of breast cancer by intra-muscular administration to human patients, […] wherein […] the formulation is adapted for attaining a therapeutically significant blood plasma fulvestrant concentration of at least 8.5 ng ml-1 for at least two weeks.

AZ had argued that this further limitation was a partial acknowledgment of the complaint which is possible at any stage of the proceedings; Art. 241 CPC. The FPC did not agree.  The further limitation only concerned an auxiliary request, i.e. it only came into play when the court had already decided on the main request, i.e. denial of the complaint without any amendments to the claims. At that stage, there is no room anymore for a partial acknowledgment of the complaint. The FPC held that it was faced with new facts to be considered as an auxiliary measure. This is possible in general, but only within the time limits for submission of novae; Art. 229 CPC. Consequently, the FPC had not admitted the newly drafted auxiliary request into the proceedings.

On appeal, AZ requested that the decision be set aside and the patent maintained on the basis of the amended third auxiliary request.

The Supreme Court did not agree, either. Whether or not an additional feature in a claim is an allowable limitation is not just a question of law. It rather requires a factual assessment of whether (or not) the application as filed provides sufficient basis for the amendment. This assessment had not been made in first instance proceedings. The Supreme Court further notes that even further factual assessment may be necessary, e.g. whether further prior art might be cited against the reformulated claim.

All requests on file!

The Supreme Court thus held that the FPC correctly did not admit the reformulated auxiliary request into the proceedings for being belated, and dismissed the appeal.

it remains to be seen how parties will adapt their course of action in the future. But I would not be surprised if defendants in nullity cases (and plaintiffs in infringement cases when faced with a plea for nullity in defense) will submit a lot more auxiliary requests at early stages of the proceedings.

Reported by Martin WILMING

BIBLIOGRAPHY

Supreme Court
Case No. 4A_543/2017 | Decision of 08 May 2018 | ‘Appeal against decision O2015_012 of 29 August 2017

AstraZeneca AB
./.
Actavis Switzerland AG

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Dr. Matthias LEEMANN

Representative(s) of Appellant / Defendant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)

Representative(s) of Respondent / Plaintiff:

SUPREME COURT DECISION

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FIRST INSTANCE DECISION

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PATENT IN SUIT

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