Is Bombardier’s Twindexx train modular? We shall see …

Reading time: 7 minutes

Case No. O2017_015 | Hearing of 20 September 2019

Alstom logo

The patent at stake in this infringement case is Alstom‘s EP 1 024 070 B1; see EPO Register and Swissreg for further bibliographic information.

Alstom alleges that Bombardier‘s Twindexx train in the IR100 (SBB RABe 502) configuration infringes EP’070:

The IR100 configuration of Bombardier’s Twindexx train
SBB logo

Please find some further information about the Twindexx train on SBB’s website and on Wikipedia.

The relevant claims are the independent claim 1 and its dependent claim 7 (emphasis added):

  • Claim 1:
  • Claim 7:
A modular railway rake formed of at least two vehicles (1, 2) with two superposed levels, including at least one bogie (10) including at least one driving axle, at least one bogie (11) including at least one carrying axle, and on-board equipment including at least one power supply electronic unit (19) for supplying motive power to one or more traction motors, at least one motive power supply unit (22, 25) for supplying power to the electronic unit (19), at least one auxiliary power supply unit (30) for supplying power to auxiliary equipment, and at least one device (21) for connection to an overhead power supply network, in which rake the motive power factor of a vehicle or a group of vehicles is defined as the ratio of the number of driving axles to the total number of axles of the vehicle or group, the rake being characterized in that at least one vehicle (1) includes at least one bogie (10) including at least one driving axle and at least one bogie (11) including at least one carrying axle, at least one bogie (11) of the rake including at least one carrying axle is associated with at least one of said on-board equipment items (19; 22, 25; 30; 21) disposed approximately over that bogie, and the ratio between the respective motive power factors of any two groups of two vehicles of the rake is not less than 1/3 and not more than 3.
A railway rake according to claim 1, characterized in that at least one power supply unit (22, 25; 30) is disposed approximately over a bogie (11) including at least one carrying axle.

First, the parties addressed the so-called ‘verbal limitation’ in their pleadings. Apparently, the plaintiff’s prayer for injunctive relief had been directed from the very beginning to an embodiment that was covered by a combination of claims 1 and 7, as well as (of course) also by claim 1 alone. Further, the arguments on infringement also dealt with the feature(s) of claim 7. The jugde-rapporteur’s expert opinion, however, did not deal with validity of the combination of claims 1 and 7. Now, how formally does a plaintiff have to ‘verbally limit’ his patent in consideration of a nullity plea in defense? This case might provide some further clarification on this issue, in addition to  S2018_007, ¶20.

Bombardier logo

As to non-infringement, Bombardier argues that the feature of a ‘modular railway rake formed of at least two vehicles’ was not fulfilled by the IR100. In Bombardier’s view, it must mean something different than just a railway rake formed of at least two vehicles since the term ‘modular’ must have been intentionally put there to have a meaning. Otherwise, it could just have been omitted. Bombardier held that ‘modular’ means that modules can be added or removed on short notice. This is not the case in the IR100 since the software needs to be adapted and the enlargement or reduction of the capacity by adding or removing modules is only possible in a service facility.

And, indeed, the judge rapporteur had apparently held that the feature ‘modular’ when properly construed in view of the description and the figures at least comprises an adaptability of the passenger capacity in a way that he did not see fulfilled in the IR100.

Some further discussion apparently circles around the feature ‘approximately over’ in claim 7; and the term ‘said on- board equipment’ in claim 1.

Further, Bombardier argues for nullity of EP’070 as a plea in defense. We conclude from the pleadings that obviousness is alleged in view of a publication about the first generation DD-IRM (1994) train of the Dutch Railways (referred to as D1; see Wikipedia and, by way of illustration, this picture (embedded from www.railfaneurope.net, i.e. tinyurl.com/y5fmc9y5)) and EP 0 631 917 A1 (referred to as D4).

Some notable side issues:

First, even though judge DUCOR is presiding the panel of judges in this case, judge BREMI was acting as chair at the hearing.

Second, it is always interesting to see how the parties deal with pleading notes. Defendant’s counsel handed over pleading notes to the counterparty and the clerk, but not to the other judges because he

[…] thought that they would prefer to just listen.

Indeed, judge BREMI confirmed that he prefers to just listen to the pleadings.

A lawyer in a hurry …

Third, it turned out around noon that defendant’s counsel had to leave early because he had to catch an international flight that had initially been booked for later, but was cancelled and re-scheduled to an earlier time. Judge BREMI emphasized that summons are not issued with a specific end time and one should not generally expect hearings at the FPC to be finished around noon. Anyway, plaintiff’s counsel co-operated to conclude the hearing fairly soon thereafter.

No settlement discussions took place.

Reported by Susanna RUDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2017_015 | Hearing of 20 September 2019

Alstom Transport Technologies SASU
./.
Bombardier Transportation (Switzerland) AG

Panel of Judges:

  • Dr. Philippe DUCOR
  • Dr. Tobias BREMI
  • Christophe SAAM

Judge-rapporteur:

  • n/a

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Christian HILTI (Rentsch Partner)
  • Moritz MEISSNER (Bombardier (inhouse)), assisting in patent matters

ANNOUNCEMENT

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PATENT IN SUIT

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Hold on tight: Sanipat and Hafner litigating about sealing strips with cut protection

Case No. O2019_005

Reading time: 2 minutes
Hafner’s logo

I came across the complaint in an infringement case that is pending at the FPC, between Sanipat GmbH and Hafner AG.

Sanipat asserts EP 2 405 067 B1 and CH 703 691 against certain sealing strips for shower trays, i.e. Hafner’s ISO-SET®.

Hafner’s website

Sanipat’s CH’691 has already been partially surrendered twice, see below.

EP’067 is currently being challenged in EPO opposition proceedings, see EPO Register. Hafner joined the pending opposition proceedings by intervention; Art. 105(1) lit. a EPC. Oral proceedings are scheduled for 28 November 2019.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

  • [tbc]

Judge-rapporteur:

  • [tbc]

Court Clerk:

  • [tbc]

Representative(s) of Sanipat:

Representative(s) of Hafner:

  • [tbc]

COMPLAINT AS FILED

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EP 2 405 067 B1

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CH 703 691

Second partial surrender, published on 30 April 2019:

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First partial surrender, published 30 November 2016:

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Patent as initially granted:

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Clarification on clarity

Case No. O2016_010 | Decision of 15 May 2019 | ‘Klarheitsprüfung bei Änderung der Patentansprüche’
Case No. O2016_011 | Decision of 15 May 2019 | ‘Klarheitsprüfung bei Änderung der Patentansprüche’

Reading time: 15 minutes

HEADNOTE in O2016_010

Art. 26, 27 PatA: Clarity on amendment of patent claims.

Lack of clarity is not a ground for invalidity. However, in order for a prayer for relief for limitation of claims in a patent nullity suit to be admissible, it must also be sufficiently determined. Therefore, the limitation of claims must be clearly formulated. The waiver of a granted independent claim constitutes a limitation of the patent, but this waiver cannot raise a question of clarity if, apart from the waiver of a granted independent claim, a mere reformulation of a granted dependent claim is made as an independent claim (¶34).

Loepfe logo

Loepfe had sued Uster Technologies AG for nullity of EP 2 347 250 (see EPO Register and Swissreg) and a divisional thereof, i.e. EP 2 352 018 (see EPO Register and Swissreg). The inventions are all about the capacitive testing of yarns or fabric, wherein the dielectric property of a capacitor arrangement is determined.

The case was split into two separate proceedings (O2016_010 for EP’250 and O2016_011 for EP’018). We have reported about the main hearing in both cases on this Blog here.

O2016_010 re EP’250

Uster logo

Uster did not defend the patent as granted but rather filed a main request (MR) and six auxiliary requests (AR1 to AR6) to maintain EP’250 in limited form. In response, Loepfe argued that all requests contained subject matter that went beyond the application as originally filed, and that all claims lacked an inventive step over several combinations of prior art documents. Novelty, however, was not at issue.

Added Matter

Loepfe alleged that several features of the MR were not disclosed in the application as originally filed. The FPC disagreed to large extent, except with regard to the feature of symmetric balancing without a reference capacitor. Briefly, the decision holds that the application as filed only disclosed symmetric balancing w a reference capacitor, and does not provide any teaching related to how symmetric balancing could be done w/o a reference capacitor. Thus, the MR failed because of added matter.

AR1 and AR2 failed for the very same reason.

AR3, however, had a reference capacitor included and could thus be considered further on the merits. Here is the structured feature analysis of AR3:

  • Claim 1 of AR3

In German language only; I’m sorry. Markup over claim 1 as initially granted (additions and deletions) for the changes made already in the MR; additional markup for AR3 in italic. Mere changes of the order of the features are not marked-up. Identifiers of the features are as used in the decision.

1A
Verfahren für den Symmetrieabgleich einer Vorrichtung (1)
1B
zur kapazitiven Untersuchung eines bewegten länglichen textilen Prüfgutes (9) wie Kardenband, Vorgarn, Garn oder Gewebe
1C mittels einer Kondensatoranordnung (21),
1E’ welche Vorrichtung (1) eine Auswerteschaltung (6) zur Auswertung mindestens einer elektrischen Messgrösse eines an einer die der Kondensatoranordnung (21) beinhaltenden Messschaltung (2) abgegriffenen elektrischen Signals,
1Ea einen Referenzkondensator (22), welcher in Serie zur  Kondensatoranordnung (21) geschaltet ist,
1D’
mindestens einen Wechselsignalgenerator (3) zum Anlegen eines elektrischen Wechselsignals von zwei elektrischen Wechselspannungen mit entgegengesetzten Phasen an die Kondensatoranordnung (21) bzw. an den Referenzkondensator,
1Da’
wobei die Kondensatoranordnung (21) vom Wechselsignalgenerator (3) durch eine Filter- und/oder Verstärkerstufe (5) zur Filterung und/oder Verstärkung des vom Wechselsignalgenerator (3) erzeugten Wechselsignals derart abgekoppelt ist, dass sie Parameter des vom Wechselsignalgenerator (3) erzeugten Wechselsignals nicht beein- flusst,
1F
Abgleichmittel (4),
1G”
die in einem elektrischen Pfad zwischen dem Wechselsignalgenerator (3) und der Messschaltung (2) Filter- und/oder Verstärkerstufe (5) angeordnet sind und mittels derer mindestens ein Parameter des elektrischen Wechselsignals derart veränderbar ist,
1H
dass ein Ausgangssignal der Auswerteschaltung (6) bei definierten, konstanten Bedingungen einen bestimmten Wert, vorzugsweise Null, annimmt, und
1I
Steuermittel (7) zur Abgabe eines elektrischen Steuersignals an die Abgleichmittel (4), mittels dessen die Veränderung des mindestens einen Parameters steuerbar ist,
beinhaltet
1J
wobei die Kondensatoranordnung (21) ohne Prüfgut (9) im Wesentlichen zeitlich unverändert belassen wird,
1K’
ein elektrisches Wechselsignal von dem mindestens einen Wechselsignalgenerator (3) erzeugt und an die  Kondensatoranordnung (21) angelegt wird
1L’
ein elektrisches Ausgangssignal der Messschaltung (2) Kondensatoranordnung (21) abgegriffen wird,
1M’
mindestens eine elektrische Messgrösse des an der Messschaltung (2) Kondensatoranordnung (21) abgegriffenen elektrischen Ausgangssignals durch die Auswerteschaltung (6) ausgewertet wird,
1N”
mindestens ein Parameter des elektrischen Wechselsignals in dem elektrischen Pfad zwischen dem mindestens einen Wechselsignalgenerator (3) und der Messschaltung (2) Filter- und/oder Verstärkerstufe (5) derart durch die Abgleichmittel (4) verändert wird,
1O
dass ein Ausgangssignal der Auswertung bei definierten, konstanten Bedingungen einen bestimmten Wert, vorzugsweise Null, annimmt,
1P
die Veränderung des mindestens einen Parameters mit dem elektrischen Steuersignal durch die Steuermittel (7) gesteuert wird, und
1Q
das elektrische Steuersignal durch das Ausgangssignal beeinflusst wird.

Inventive Step of AR3

Plaintiff alleged a lack of inventive step over EP 1 124 134 (D2) in view of WO 01/31351 (D11), DE 195 35 177 (D5), US 4,843,879 (D1, referred to in EP’250, ¶[0007]), US 3,757,211 (D6), US 2007/0146019 (D4), a publication by Huang (D3) which is unfortunately not specified any further, and further in view of general knowledge.

In addition, plaintiff also alleged a lack of inventive step over D1 since the differentiating feature (arrangement of the means for balancing before the filter/amplifier) had no technical effect and could not render the claimed subject-matter inventive.

The FPC did not agree. In particular, the decision holds that the skilled person would not have considered D4, D11, D5, D6, or D3 to solve the objective technical problem which was defined as enhancing the quality of the measurement results. Note that D2 had already been cited in the patent in suit, as a result of which the objective technical problem was taken from the patent itself.

Finally, the FPC also rejected the argument that general knowledge would have led a skilled person to control the balancing means automatically. While the skilled person could arguably have done so, the decision holds that there was no teaching in D2 that would have led the skilled person to actually do it.

Consequently, the FPC concluded that AR3 was inventive over the prior art.

Clarity

An aspect of the decision that is of interest beyond the specific case is related to clarity. Plaintiff alleged that defendant’s requests for maintenance of the patent in limited form were unclear.

A Europen patent cannot be revoked for lack of clarity; the lists in Art. 138 EPC and Art. 26 PatA are closed. However, the decision holds that this must not be mixed up with requests in civil proceedings which must be clearly worded in order to be allowable. The decision holds that this is not only the case with prayers for injunctive relief (BGE 131 III 70), but also with requests for limitation of the patent in nullity proceedings. The decision goes on with a somewhat complicated derivation  with reference to BGE 92 II 280 (¶3a), 120 II 357 (¶2), 4C.108/1997 (¶3a), the corresponding practice at the EPO (G 3/14) and an analogy to Art. 97 PatR. I feel this was necessary since there is no explicit rule in the Swiss PatA that requires the amended claims to fulfil all requirements of the PatA (unlike e.g. Art. 101(3) lit. a EPC — “meet the requirements of this Convention”, what includes clarity, Art. 84 EPC).

Ein Rechtsbegehren, das einen […] unabhängigen Anspruch durch die Aufnahme eines […] abhängigen Anspruchs beschränkt, stellt keine materielle Einschränkung des erteilten abhängigen Anspruchs dar. Damit wird auf den erteilten unabhängigen Anspruch  verzichtet und der entsprechende abhängige erteilte Anspruch wird im eingeschränkten Patent als unabhängiger Anspruch weitergeführt. Der Verzicht auf den erteilten unabhängigen Anspruch bildet zwar eine Einschränkung des Patents gemäss Art. 27 Abs. 1 PatG. Dieser Verzicht kann jedoch keine Klarheitsfrage aufwerfen, denn die blosse Umformulierung des erteilten abhängigen Anspruches als unabhängiger Anspruch bildet keine weitere Einschränkung des Patents im Sinne von Art. 27 Abs. 1 PatG und kann entsprechend auch nicht auf Klarheit geprüft werden.

The bottom line is that mere combination of an independent claim with one or more dependent claims in nullity proceedings cannot be challenged with respect to clarity.


In the case at hand, the court did not see any problem re clarity. The plaintiff had basically objected to the term ‘parameter’ being unclear and that the limited claims would contradict the description. The former argument was rejected by the court because the term was already included in the claims as granted, while the latter was deemed resolved by a declaration according to Art. 97(2) PatR.

Costs

In view of the mixed outcome, the costs were split between the parties. The fact that the patent was limited by incorparation of a feature taken from the specification did not change anything in this respect since revocation of the patent had been requested in entirety.

The FPC did not follow defendant’s argument that costs incurred for the assisting patent attorney are no ‘necessary expenses’ (Art. 3 lit. a and Art. 9(2) CostR-PatC), on top of the costs for legal representation according to the tariff, if the patent attorney could have done the whole case on her/his own; Art. 29(1) PatCA. Even if the patent attorney could have run the case on his own, there is no obligation to do so. Complex legal issues may come up in the further course of the proceeding, and/or a counterclaim for infringement.

Aus der Tatsache, dass einer Partei die Möglichkeit gegeben wird, sich durch einen Patentanwalt in Nichtigkeitsprozessen vertreten zu lassen (Art. 29 PatGG),  kann weder eine Pflicht abgeleitet werden, keinen Rechtsanwalt beizuziehen, noch kann sie es rechtfertigen, wenn eine Partei von einem Rechtsanwalt vertreten wird, keine notwendigen Auslagen für den Patentanwalt mehr zuzusprechen.

Now, what is interesting is the split of costs awarded for legal representation on the one hand, and assistance of the patent attorney on the other hand. Even though the actual expenses for the patent attorney were not awarded in full, they were still awarded to an extent that is on the upper end of the tariff (CHF 44’841.20 requested, CHF 30’000,– awarded). However, compensation for legal representation was only considered on the lower end of the tariff according to Art. 4 CostR-PatC, based on a value in dispute of CHF 125’000,–.

The decision has not been appealed and has thus become final meanwhile.

O2016_011 re EP’018

Defendant filed a MR and five ARs to maintain the patent in limited form. With respect to the main request, plaintiff alleged that new matter was introduced and that the independent claim was not inventive.

Main Request: Added matter?

Plaintiff alleged that the newly introduced feature of a ‘reference capacitor different from the balancing means’ did not have sufficient basis in the application as originally filed, and that it amounts to a disclaimer.

The court did not agree that new matter was introduced. Rather, the reference capacitor and the balancing means were indeed separate entities in all embodiments of the patent. Therefore, the feature in question was directly and unambiguously derivable for the skilled person from the application as originally filed, and the main request did not contain added matter and the disclaimer argument was moot.

… but is it inventive?

No, it is not. The decision holds that the subject matter of the main request was obvious to the skilled person from EP 1 124 134 (D2) in view of the skilled person general knowledge. Plaintiff’s other arguments / combinations of prior art failed to render the subject-matter of the MR obvious.

Plan B

The FPC then moved on to AR1:

  • Claim 1 of AR1

In German language only; I’m sorry. Markup over claim 1 as initially granted (additions and deletions) for the changes made already in the MR; additional markup for AR1 in italic. 

1A’ Vorrichtung (1) zur Bestimmung mindestens einer dielektrischen Eigenschaft kapazitiven Untersuchung eines bewegten länglichen textilen Prüfgutes (9) wie Kardenband, Vorgarn, Garn oder Gewebe mittels
1B’ einer Kondensatoranordnung (21) mit zwei voneinander beabstandeten Platten, zwischen denen sich Luft befindet und zwischen die das längliche textile Prüfgut (9) einführbar ist,
1C beinhaltend eine Auswerteschaltung (6) zur Auswertung mindestens einer elektrischen Messgrösse eines an der Kondensatoranordnung (21) abgegriffenen elektrischen Signals,
1D einen Referenzkondensator (22), welcher in Serie zur Kondensatoranordnung (21) geschaltet ist,
1E’ mindestens einen Wechselsignalgenerator (3) zum Anlegen von zwei elektrischen Wechselspannungen mit entgegengesetzten Phasen an die Kondensatoranordnung (21) bzw. an den Referenzkondensator (22),
1Ea’ wobei die Kondensatoranordnung (21) vom Wechselsignalgenerator (3) durch eine Filter- und/oder Verstärkerstufe (5) zur Filterung und/oder Verstärkung des vom Wechselsignalgenerator (3) erzeugten Wechselsignals derart abgekoppelt ist, dass sie Parameter des vom Wechselsignalgenerator (3) erzeugten Wechselsignals nicht beeinflusst,
1F Abgleichmittel (4),
1G”’ die in einem elektrischen Pfad zwischen dem mindestens einen Wechselsignalgenerator (3) und der Filter- und/oder Verstärkerstufe (5) Kondensatoranordnung (21) angeordnet sind und mittels derer mindestens ein Parameter des elektrischen Wechselsignals derart veränderbar ist,
1H dass ein Ausgangssignal der Auswerteschaltung (6) bei definierten, konstanten Bedingungen den Wert Null annimmt,
1I Steuermittel (7) zur Abgabe eines elektrischen Steuersignals an die Abgleichmittel (4), mittels dessen die Veränderung des mindestens einen Parameters steuerbar ist.

Contrary to plaintiff’s allegation, the court found that no new matter was introduced.

In terms of obviousness, AR1 was based on the MR, but more narrow in scope. Thus, any combination of prior art that did not render the MR obvious could consequently not render AR1 obvious. As such, the court only discussed obviousness over D2 in view of the skilled person’s general knowledge. Here, the court did rule that an inventive step was given.

EP ‘018 was thus maintained in limited form according to AR1.

Clarity and costs

No surprises here; the reasoning is essentially the same as in O2016_010, see above.

Like O2016_010, this decision has also not been appealed and has thus become final meanwhile.

Reported by Philippe KNÜSEL and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_010 | Decision of 15 May 2019 | ‘Klarheitsprüfung bei Änderung der Patentansprüche’
Case No. O2016_011 | Decision of 15 May 2019 | ‘Klarheitsprüfung bei Änderung der Patentansprüche’

Gebr. Loepfe AG
./.
Uster Technologies AG

Panel of Judges:

  • Frank SCHNYDER
  • Dr. Tobias BREMI
  • Christoph MÜLLER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)
  • Dr. Kurt SUTTER (Blum), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Dr. Pavel PLISKA (inhouse @ Uster Technologies)

CASE NO. O2016_010
EP’250 maintained as amended
Decision of: 15 May  2019
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EP 2 347 250 B1:

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CASE NO. O2016_011
EP’018 maintained as amended
Decision of: 15 May 2019
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EP 2 352 018 B1

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Be specific!

Reading time: 9 minutes

Case No. O2016_001 | Decision of 27 June 2019

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

Comadur logo

The patent in suit is CH 707 572 B1; see Swissreg for further bibliographic information. An automated translation can be found here. Harcane had sued Comadur essentially to the effect that CH’572 be declared invalid (based on Art. 261(1) lit. a PatA, not lit. d); or, alternatively, if CH’572 was held valid, that it be transfered to Harcane. On the other hand, Comadur finally defended CH’572 with the claims being limited. Further, Comadur requested that Harcane’s complaint should be held inadmissible.

Parallel proceedings elsewhere

It is a procedural requirement that the case is not the subject of pending proceedings elsewhere or is not already the subject of a legally binding decision; Art. 59(2) lit. d and e CPC.

There had been co-pending proceedings in Neuchâtel where Comadur had sued Harcane and sought for a delaratory judgment based on the Unfair Competition Act that it was the owner of certain manufacturing processes of ceramic injection molding (CIM) material. In turn, Harcane saught a declaratory judgment in proceedings in Neuchâtel that Harcane was the owner of the respective trade secrets relating to the CIM material.

Obviously, these requests differ from the requests in proceedings at the FPC. Thus, the case that has been brought before the FPC had not been the subject of pending proceedings elsewhere. Still, the FPC had stayed its proceedings on 28 May 2018 since certain preliminary questions overlapped with the cantonal proceedings. The stay was lifted on 13 February 2019, i.e. shortly after the Supreme Court had decided on both parties’ appeals against the decision of the Neuchâtel cantonal court; see 4A_584/2017, 4A_590/2017 of 9 January 2019.

The decision holds in ¶21 that the plaintiff well has a legitimate interest in bringing the present complaint since, according to the prior cantonal proceedings, Harcane is only prohibited to use some very specific embodiments of the patent in suit. However, even the limited scope of CH’572 goes far beyond that.

limitation of the patent

The defendant / patentee partially surrendered CH’572 in accordance with Art. 24(1) lit. c PatA and declared the same to the FPC; see O2012_030, ¶17.

Claim 1 as amended reads as follows:

  • Claim 1 as amended
Liant pour composition de moulage par injection comprenant :

    • de 35 à 54% vol. d’une base polymérique
    • de 40 à 55% vol. d’un mélange de cires,
    • et environ 10% vol. d’un surfactant,

dans lequel la base polymérique contient des copolymères d’éthylène et d’acide méthacrylique ou acrylique, ou des copolymères d’éthylène et d’acétate de vinyle, ou des copolymères d’éthylène comprenant un anhydride maléique ou un mélange de ces copolymères, ainsi que du polyéthylène, du polypropylène et une résine acrylique, et dans lequel lesdits copolymères sont des copolymères d’éthylène et d’acide méthacrylique ou acrylique, ou des copolymères d’éthylène comprenant un anhydride maléique ou un mélange de ces copolymères;

à l’exclusion d’un liant pour composition de moulage par injection comprenant de 35 à 50% vol d’une base polymérique, de 40 à 55 % vol d’un mélange de cires, et environ 10% vol d’un surfactant, dans lequel la base polymérique contient des copolymères d’éthylène et d’acide méthacrylique ou acrylique, ou des copolymères d’éthylène et d’acétate de vinyle, ou des copolymères d’éthylène comprenant un anhydride maléique ou un mélange de ces copolymères, ainsi que du polyéthylène, du polypropylène et une résine acrylique.

The underlined / italic part of the claim is a so-called undisclosed disclaimer to exclude the subject-matter of CH 708 097 A2, a prior right that had been filed earlier but published only after the filing date of CH’572. As much as I recall, this is the first time that such an undisclosed disclaimer has been at stake and allowed in proceedings at the FPC. Note, however, that O2012_030 in ¶20.1 already suggested that the FPC would follow the EPO’s precedent G 1/03.

Dependent claims 2-6 remain unchanged. Claims 7-10 have been deleted.

novelty and inventive step

The plaintiff alleged that CH’572 was not novel over US 5,266,264, several PhD theses (Juan M. Adames, 2007; S. Kowalski, 2005; C. Quinard, 2008) and a prior use, i.e. the sale of a certain feedstock to Comadur.

Apparently, the court did not appreciate how the novelty attacks had been presented. The decision holds that, according to common practice, a specific analysis of the features of the claim and a specific reference to the prior art has to be made, for each of the features. It is not the court’s task to establish the facts of its own motion and to seek the information in the references filed as exhibits. On the contrary, the relevant facts must be alleged by providing specific information, in particular by reference to a page or line number, while specifying which feature of the claim is there to be found (see ¶¶28-30).

Le Tribunal n’est pas chargé d’établir les faits d’office et il ne lui incombe pas de rechercher lui-même les informations dans les documents de l’art antérieur déposés en tant que pièce jointe. En particulier, une référence globale à un document dans le sens de «l’objet de la revendication 1 est divulgué dans le document X» ne suffit pas pour satisfaire au fardeau de l’allégation. Il faut au contraire alléguer les faits pertinents en fournissant des indications spécifiques, notamment par renvoi à un numéro de page, de ligne, tout en précisant quelle caractéristique de la revendication se retrouve dans le document de l’état de la technique invoqué.

In the absence of any specific allegations, the FPC did not consider the novelty attacks to the extent they were based on prior art documents. What remained was the sale of a certain feedstock to Comadur. However, the decision holds that these sales were governed by an NDA and thus cannot be considered at all. Further sales to third parties had been alleged but remained essentially unsubstantiated.

Accordingly, novelty was acknowledged.

The FPC did not appreciate the way the obviousness attacks had been presented, either. The decision holds that the FPC cannot complete an incomplete factual allegations of the parties. This is in contrast to proceedings at the EPO which shall examine the facts of its own motion and which shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought; Art. 114(1) EPC. Determining whether an invention is based on an inventive step is a question of law. However, the general technical knowledge of the skilled person, the closest prior art, the differentiating features, etc. are facts, and it is up to the parties to allege these facts (see ¶37).

In my perception, the considerations with respect to the burden / degree of substantiation are what this decision will likely be cited for in the future.

To the extent the FPC admitted the plaintiff’s arguments and evidence into the proceedings at all, the decision holds that the claimed subject-matter was not obvious over US 5,266,264.

Costs

Even though the plaintiff did not succeed with any request, the defendant was still charged with half of the court fee since the patent was maintained only to a limited extent, i.e. the defendant partially acknowledged the plaintiff’s complaint and both parties win and therefore lose equally.

No compensation for legal represenatation was awarded.

Interestingly, the plaintiff only involved a patent attorney when the expert opinion of the judge-rapporteur had been established. The respective expenses were not considered necessary anymore since the closure of the file had already occured at that time. On the other hand, defendant’s expenses for the assisting patent attorney of ICB, a company within the Swatch group of companies, had not been considered, either: No intra-group expenses are reimbursed; see O2014_009, ¶6.2.

UPDATE 9 September 2019:

The decision has been appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_001 | Decision of 27 June 2019

Harcane Sàrl
./.
Comadur SA

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

  • Jean-Claude SCHWEIZER (SLB)

Representative(s) of Defendant:

  • Dr. Nathalie TISSOT (Tissot)
  • Marie TISSOT (Tissot)
  • Thierry RAVENEL (ICB), assisting in patent matters

DECISION OF THE FPC
→ patent maintained / partially surrendered; plaintiff’s claims dismissed
Case no.: O2016_001
Decision of: 27 June 2019
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DECISION OF THE SUPREME COURT
→ referred to in ¶13 of the FPC decision
Case nos.: 4A_584/2017
4A_590/2017
Decision of: 9 January 2019
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Alstom and Bombardier litigating over the Twindexx train; hearing canceled

Reading time: 4 minutes

Case No. O2017_015 | Hearing of 1 July 2019 (canceled)

First things first: The hearing scheduled for today did not take place. It had been cancelled on short notice because a judge got sick.

Cancellation notice on the website of the FPC

Thus, the following is just a quick teaser of the things to come.

Alstom’s logo

The patent at stake in this infringement case is Alstom‘s EP 1 024 070 B1; see EPO Register and Swissreg for further bibliographic information.

Alstom alleges that Bombardier‘s Twindexx train in the IR100 (SBB RABe 502) configuration infringes EP’070:

The IR100 configuration of Bombardier’s Twindexx train
SBB’s logo

Please find some further information about the Twindexx train on SBB’s website and on Wikipedia.

Bombardier, on the other hand, argues for nullity of EP’070 as a plea in defense. Further, Bombardier argues for non-infringement because the IR100 train does not literally reproduce the feature of a ‘modular’ train, and the feature of ‘two superposed levels’ (marked-up in the claim recited below).

  • Claim 1 of EP'070 reads as follows:
A modular railway rake formed of at least two vehicles (1, 2) with two superposed levels, including at least one bogie (10) including at least one driving axle, at least one bogie (11) including at least one carrying axle, and on-board equipment including at least one power supply electronic unit (19) for supplying motive power to one or more traction motors, at least one motive power supply unit (22, 25) for supplying power to the electronic unit (19), at least one auxiliary power supply unit (30) for supplying power to auxiliary equipment, and at least one device (21) for connection to an overhead power supply network, in which rake the motive power factor of a vehicle or a group of vehicles is defined as the ratio of the number of driving axles to the total number of axles of the vehicle or group, the rake being characterized in that at least one vehicle (1) includes at least one bogie (10) including at least one driving axle and at least one bogie (11) including at least one carrying axle, at least one bogie (11) of the rake including at least one carrying axle is associated with at least one of said on-board equipment items (19; 22, 25; 30; 21) disposed approximately over that bogie, and the ratio between the respective motive power factors of any two groups of two vehicles of the rake is not less than 1/3 and not more than 3.

A new date for the hearing will now be fixed with the parties. Stay tuned.

UPDATE 21 August 2019:

New summons have been issued for 20 September 2019; see here.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_015 | Hearing of 1 July 2019 (canceled)

Alstom Transport Technologies SASU
./.
Bombardier Transportation (Switzerland) AG

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No recusal of the judge-rapporteur — but there still is an elephant in the room …

Reading time: 8 minutes

Case No. 4A_56/2019 (Supreme Court) | Decision of 27 May 2019 on appeal against O2017_024 (FPC) | Order of 11 December 2018

The Supreme Court had to deal with an appeal against an (unpublished) order issued by the Administrative Commission (AC) of the FPC in case no. O2017_024, by which order the requested recusal of the judge-rapporteur had been denied. Defendant / appellant felt that some statements of the judge-rapporteur at the occasion of the instruction hearing (Art. 226 CPC) gave rise to the appearance of bias. It is important to understand that the instruction hearing at the FPC consists of two parts (Art. 8(4) of the Guidelines on Proceedings before the Federal Patent Court), i.e.:

a)   The court delegation discusses with the parties the matter at issue, asks questions where the party submissions are unclear, and provides substantiation advice. Evidence may also be accepted. This first part is transcribed.

b)   The court delegation explains its preliminary assessment of the matter in dispute off the record and attempts to bring about a settlement between the parties. The parties and the Court are prohibited from subsequently invoking any submissions made during this second part of the hearing; it serves exclusively to bring about a settlement.

Notably, the appellant did not object to the formal part a) of the instruction hearing (where the judicial duty to ask and inform applies), but rather to the informal part b) which serves exclusively to bring about a settlement.

After having read the first lines of the decision, I so much hoped that this decision would finally help me understand the metes and bounds of the informal part of the instruction hearing, and maybe even the formal part. Unfortunately, it doesn’t. The Supreme Court did not even assess the issue on the merits, but rather dismissed the appeal for formal reasons. What a pitty.

First, the Supreme Court holds that the appellant raised the objection belatedly, i.e. only 24 days after the instruction hearing. The Supreme Court did not buy into the argument that the procedural violations had only been noticed well after the instruction hearing (¶4.3):

It is not convincing that the appellant has only gained knowledge of the (alleged) ground for recusal until two weeks after the hearing, since the appellant does not object to a single error in the conduct of the proceedings, which may not be discernible at first sight, but «a large number of inadmissible statements by the judge-rapporteur», which «substantiated a serious violation of the duties of the judge by the disregard of fundamental principles of civil procedure.»


Further, the appellant criticised a statement made by the judge-rapporteur in his opinion of 26 September 2018, which the appellant considered would in itself give rise to the appearance of bias, and which should have been taken into account by the FPC’s AC ex officio. This statement is literally recited in the decision in ¶5.2, as follows (jump here for an English translation):

Die Instruktionsverhandlung dient gemäss Art. 226 ZPO unter anderem der freien Erörterung des Streitgegenstandes und dem Versuch einer Einigung. Um eine Einigung zu ermöglichen, nimmt der Instruktionsrichter eine vorläufige und unpräjudizielle Einschätzung der Sach- und Rechtslage vor. Dass es sich dabei um eine vorläufige Einschätzung handelt, die sich im Laufe des weiteren Verfahrens ändern kann und von den weiteren Mitgliedern des Spruchkörpers nicht geteilt werden muss, wird den Parteien klar kommuniziert. Die genannten Zwecke der Instruktionsverhandlung können nur erreicht werden, wenn sich der Instruktionsrichter – im Rahmen des von den Parteivorträgen umrissenen Streitgegenstandes – frei äussern kann. Eine strikte Bindung an einzelne Tatsachenbehauptungen ist in diesem frühen Verfahrensstadium, in dem das Behauptungsverfahren noch nicht abgeschlossen ist, nicht möglich und nicht zielführend.

Inofficially translated:

According to Art. 226 CPC, the instruction hearing serves, among other things, the free discussion of the subject matter in dispute and the attempt to reach an agreement. In order to enable an agreement to be reached, the judge-rapporteur makes a preliminary and unprejudiced assessment of the factual and legal situation. The parties are clearly informed that this is a preliminary assessment, which may change in the course of further proceedings and need not be shared by the other members of the panel. The stated purposes of the instruction hearing can only be achieved if the judge-rapporteur can freely express himself within the framework of the subject matter of the dispute outlined by the party submissions. A strict link to individual factual assertions is not possible and not expedient at this early stage of the proceedings, at which the assertion proceedings have not yet been concluded.

The FPC’s AC did not see any reason for recusal in the above statements. But still, and ‘for the sake of completeness’, the FPC’s AC addressed the opinion of the judge-rapporteur and concluded — in general terms, detached from the case at hand — that ‘there was no basis for supplementing the relevant alleged facts by the judge, neither outside nor within settlement discussions.’

[…] keine Grundlage für eine Ergänzung des relevanten behaupteten Sachverhalts durch den Richter, weder ausserhalb noch innerhalb von Vergleichsgesprächen.

A judge-rapporteur, navigating on difficult territory

I am not fully sure what is meant with ‘no basis’. If this is to be understood in a sense that supplementing the alleged facts (within or beyond ‘the framework of the subject matter of the dispute outlined by the party submissions’) is a clear no-go, then I could not agree more. It may be a tough exercise for a judge-rapporteur to stick to the facts as they have been asserted after only a single exchange of briefs, in particular when the forthcoming further assertions are all too obvious. But still, parties sometimes just do not make even the most obvious next assertion (intentionally or unintentionally), and any helping hand for a potentially negligent or ignorant party would be to the disadvantage of the respective other party.

But in the matter at hand, the Supreme Court did not need to deal with this issue on the merits. The decision holds that the appellant’s criticism misses the point: Procedural errors (as well as a decision that is potentially wrong on the merits) cannot in themselves justify the appearance of bias. The situation is different only if there are particularly blatant or repeated errors which must be assessed as a serious violation of the duties of the judge. Consequently, the request for recusal of a judge cannot normally serve to assess alleged procedural or other errors of the judge. Such complaints must be raised on appeal; see 4A_149/2018 in ¶5.2. Accordingly, the Supreme Court did expressly not assess to what extent the statements made by the judge-rapporteur — in particular the last two sentences — are in conformity with the law. The only decisive point is, in the Supreme Court’s view, that this statement was not a particularly blatant error of such a kind that would make the rejected judge appear almost biased. Thus, also appellant’s second criticism failed.

Now, what can be learned from this decision?

Unfortunately, not too much for the time being, because the Supreme Court took a formal shortcut. But, in my perception, there is some handwriting on the wall, isnt’t it? And, maybe, we will see the appellant’s second criticism being raised again on appeal if this case moves on and the appellant / defendant is unsuccessful in first instance proceedings on the merits.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_56/2019 (Supreme Court) | Decision of 27 May 2019 on appeal against O2017_024 (FPC) | Order of 11 December 2018

n/a (appellant / defendant)
./.
n/a (respondent / plaintiff)

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Fabienne HOHL
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  • Dr. Christian KÖLZ

Representative(s) of Appellant:

  • Dr. Rudolf A. RENTSCH (IPrime)

Representative(s) of Respondent:

  • Dr. Simon HOLZER (MLL)

SUPREME COURT
on appeal against O2017_024 (FPC) | Order of 11 December 2018
Case no.: 4A_56/2019
Decision of: 27 May 2019
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PATENT COURT
Case no.: O2017_024
Order of: 11 December 2018

Upublished; not available yet.

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The heat is on between Laurastar and Innosteam

Case No. O2018_016 | Hearing of 25 June 2019

Reading time: 7 minutes
Laurastar logo

Laurastar and Innosteam are litigating about ownership of two PCT applications, WO 2018/006994 A1 and WO 2018/036653 A1; see the EPO Register here and here. The patent applications are about devices and methods for producing instant steam (WO’994) and instant hot water (WO’653), for use e.g. in devices for ironing.

Innosteam logo

Briefly, plaintiff alleges that the subject matter of both PCT applications had been invented by the inventors in fulfillment of their contractual duties while they were employees of Laurastar.

We have reported on this Blog here about the provisional register ban that had been issued without hearing the defendant beforehand, and the subsequent hearing. The register ban had finally been maintained in summary proceedings S2018_003; see this Blog here.

Note that both PCT applications have meanwhile been nationalized inter alia at the EPO, but the EPO has stayed its proceedings on request of Laurastar SA pursuant to R. 14(1) EPC while main proceedings at the FPC are pending; see here (re WO’693) and here (re WO’994). It is still (too) early to obtain full and complete information about the status of nationalization elsewhere in the world, but WIPO’s PatentScope indicates further nationalizations in the Ukraine and the Russian Federation; see here (re WO’653) and here (re WO’994). Anyway, we could now catch a glimpse of what is going on in main proceedings O2018_016 at the hearing on June 25, 2019 in Neuchâtel. The hearing was held in French language — well, at least the most of it.

Plaintiff’s pleadings emphasized that the invention was conceived before the inventors left Laurastar SA to work for Innosteam Swiss SA. A significant part of the argument evolved around a document created by Mr. Pasche that allegedly shows all the features of the patent applications in question (hereinafter refered to as ‘Pasche’):

The document created by M. Pasche while employed by the plaintiff

But even if there were any potential differences between Pasche and the two patent applications, they were only of minor importance and could not render the claimed subject-matter inventive. And, in the plaintiff’s view, this has to be taken into account; else, one could just steal an invention, add an insignificant feature to it and be unassailable.

Plaintiff further questioned to what extent a detailed claim analysis, as apparently done by the judge rapporteur, was appropriate. In the plaintiff’s view, the claims are still subject to change and do not necessarily represent the invention as a whole. For this reason, according to the plaintiff, the judge rapporteur should have analyzed the description as well. In addition, plaintiff argued that the inventiveness of the subject matter over Pasche should have been analyzed as well.

Defendant, by contrast, argued that the subject-matter outlined in Pasche was free state of the art, in any event. Thus, even if it showed all the features of the patent applications in question, just for the sake of argument, it could not be proprietary to Laurastar SA or anybody else. This led to some discussion about the term ‘invention’: Does it imply non-obviousness over the prior art, i.e. an inventive step? It has been argued that under the Swiss Code of Obligations (Art. 332), an invention does not require an inventive step (emphasis added):

Inventions and designs produced by the employee alone or in collaboration with others in the course of his work for the employer and in performance of his contractual obligations belong to the employer, whether or not they may be protected.

A decision on these issues might be an interesting read — if the parties haven’t settled.

On the procedural side, the hearing was quite illustrative of Switzerland:

Defendant’s representative started his pleadings with reference to the federalism in Switzerland and explained that he was going to structure his pleadings according to what is customary in Geneva. This may have contributed to some confusion that arose after a (brief) first part of defendant’s pleadings. Defendant’s representative sat back down, and the President asked if he was done, which the representative affirmed. The president then firmly told the parties that the time to make arguments was now:

Le temps de répondre, c’est maintenant!

This prompted defendant’s councel to get back up again and finish his pleadings. The assisting patent attorney then added his share to the pleadings — in German language. This was apparently not appreciated by everybody in the room, and the opposing patent attorney could not help himself but leave a snarky remark about this in his own pleadings later.

I wonder whether I should better immediately refresh my French and learn some Italian, just to be prepared for some spontaneous pleadings in a language that hasn’t been announced beforehand(?).  (Just kidding) /MW
Where do we go now?

At the end of the hearing, the President asked whether the parties were interested in settlement talks. Both parties gave answers along the same lines, saying that in principle they would of course be interested in a settlement. However, neither party found it realistic to find a mutually agreeable compromise since a joint assignment of the patent applications was not desirable to either party. Thus, according to both parties, settlement negotiations were pointless.

OMG

The President buried the face in his hands and, after a sigh, explained to the parties in German (‘Erlauben Sie mir, das auf Deutsch zu sagen’) that it was conceivable that a judgment could give exactly that result: Joint ownership. Such a forced marriage may not facilitate things for either party and the President gently reminded both parties that a settlement may well be the better course of action.

A three-legged race is a tricky exercise. It may work, but one may also stumble miserably.

The parties asked for a short break to discuss the President’s comment, after which it was discussed non-publicly whether the parties may be willing to settle after all.

Reported by Philippe KNÜSEL and Martin WILMING

BIBLIOGRAPHY

Case No. O2018_016 | Hearing of 25 June 2019

Laurastar SA
./.
Innosteam Swiss SA

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Giovanni GERVASIO

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

  • Dominique GUEX (Bourgeois)
  • André ROLAND (Roland), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

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WO 2018/006994 A1

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WO 2018/036653 A1

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A Swiss approach to the EPO’s gold standard

Reading time: 5 minutes

Case No. O2016_016 | Decision of 6 June 2019

The patent at stake is MundiPharma‘s EP 2 425 825 B9; see EPO Register and Swissreg. EP’825 pertains to a combination of oxycodone hydrochloride (in an amount of 10 to 150g) and naloxone hydrochloride (in an amount of 1 to 50g), in a weight ratio of 2:1.

This combination is an analgesic drug that is available as modified-release tablets under the trade name Targin® by MundiPharma.

Develco’s logo

Develco sought annulment of EP(CH)’825 for various reasons, i.e. undue extension of subject-matter, non-enablement and invalidity of the priority claim. Please see this Blog here for a brief summary of the main hearing in this matter, and some relevant prior art Develco has asserted against patentability of the claimed subject-matter.

MundiPharma’s logo

Defendant / patentee MundiPharma countersued for infringement. MundiPharma not only countersued the plaintiff, but rather also attempted to involve the German branch of Develco as well as Konapharma. This attempt failed.

It was evident from the pleadings at the main hearing that the expert opinion of the judge-rapporteur had held that the patent was invalid for undue extension of subject-matter. Thus, it does not come as a big surprise in the decision that EP(CH)’825 is held invalid for undue extension of subject-matter. Consequently, the decision does not address the other grounds of invalidity asserted by Develco; and the counterclaim for infringement is moot, too.

In my perception, the detailed assessment of undue extension of subject-matter is nothing out of the ordinary. It’s all about the EPO’s ‘gold standard’ (G 2/10 in ¶4.3, with reference to G 3/89 and G 11/91), i.e.

[…] any amendment […] can […] only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of [the application as filed].

What is interesting, though, is how the decision addresses the so-called essentiallity-test (‘Wesentlichkeits-Test’), in particular how this test fits with the ‘gold standard’. In brief, in T 331/87 the Board held that the replacement or removal of a feature from a claim may (referred to in the Case Law of the Boards of Appeal as a ‘might’) not be in breach of Art. 123(2) EPC if the skilled person would directly and unambiguously recognise that

  1. the feature was not explained as essential in the disclosure;
  2. it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve; and
  3. the replacement or removal required no real modification of other features to compensate for the change.

It is important to note that even this Board apparently (in view of the conditional language used; see mark-up above) did not consider compliance with the above three criteria as a sufficient condition for compliance with Art.123(2) EPC in any given case. Accordingly, the present decision holds that the only thing that really matters is the ‘gold standard’ discussed above, which cannot be deviated from. With reference to the Swiss Supreme Court decision 4A_109/2011, 4A_111/2011 (¶4.3.1), however, the decision further holds that in a case where not even the criteria of the essentiallity test are fulfilled, it must be assumed that an undue extension of subject-matter occured.

What suprises me, though, is that the decision holds (¶31):

Otherwise this would again amount to a materiality test, which was expressly rejected in G 2/98.

Frankly, I don’t see that in G 2/98, at least not expressly (‘ausdrücklich’). One may well conclude from the gist of G 2/98, in particular ¶8.3, that it does not endorse a distinction of technical features which are related to the function and effect of the invention and technical features which are not. But there is no discussion of the essentiallity test at all in G 2/98. Else, if there was, the essentiallity test would surely not be referred to anymore in the most recent edition of the Case Law of the Boards of Appeal and the Guidelines.

But still, my personal take-away message from this decision is that the essentiallity test is of no avail in proceedings at the FPC (until someone comes along and proves me wrong).

The decision is not yet final / may still be appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_016 | Decision of 6 June 2019

Develco Pharma Schweiz AG
./.
MundiPharma Medical Company

Panel of Judges:

  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Hannes SPILLMANN

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Develco:

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

Representative(s) of Mundipharma:

  • Dr. Simon HOLZER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters
  • Dr. Andreas LEDL (Maiwald), assisting in patent matters

DECISION

Don’t be misled by the patent no. on the bottom of the title page. EP 2 245 825 is a typo; this should read EP 2 425 825.
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Lilly’s patent on combination of pemetrexed and vitamin B12 challenged

Case No. O2018_003 ¦ Hearing of 17 June 2019

Reading time: 6 minutes

The patent in suit is Lilly‘s EP 1 313 508 B1; see the EPO Register and Swissreg for further information. The independent claims of EP’508 read as follows (emphasis added):

1.   Use of pemetrexed disodium in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof, said pharmaceutical derivative of vitamin B12 being hydroxocobalamin, cyano-10-chlorocobalamin, aquocobalamin perchlorate, aquo-10-chlorocobalamin perchlorate, azidocobalamin, chlorocobalamin or cobalamin.

12.   A product containing pemetrexed disodium, vitamin B12 or a pharmaceutical derivative thereof said pharmaceutical derivative of vitamin B12 being hydroxocobalamin, cyano-10-chlorocobalamin, aquocobalamin perchlorate, aquo-10-chlorocobalamin perchlorate, azidocobalamin, chlorocobalamin or cobalamin, and, optionally, a folic binding protein binding agent selected from the group consisting of folic acid, (6R)-5-methyl-5,6,7,8-tetrahydrofolic acid and (6R)-5-formyl-5,6,7,8-tetrahydrofolic acid, or a physiologically available salt or ester thereof, as a combined preparation for the simultaneous, separate or sequential use in inhibiting tumor growth.

It’s all about a combination of the antifolate pemetrexed disodium, vitamin B12 and, optionally, folic acid. Briefly, pemetrexed is an antifolate that inter alia inhibits synthesis of thymidine and thus de novo DNA synthesis. Evidently, antifolates are quite toxic. But according to EP’508, toxicity can be successfully controlled by co-administration of pemetrexed with vitamin B12 and, optionally, folic acid.

Pemetrexed disodium
Pemetrexed disodium

EP’508 had already been litigated in infringement proceedings in Switzerland, resulting in a landmark decision of the Supreme Court on the Doctrine of Equivalents and how amendments of the patent during prosecution are to be dealt with in this respect; see this Blog here.

This time, validity of EP’508 is being challenged, based on a lack of novelty or, at least, lack of an inventive step; and added matter. Only inventive step has been pleaded in the hearing. With respect to the other grounds of nullity, the Sandoz merely referred to the written submissions.

It was evident from the pleadings that the opinion of the judge-rapporteur had been in favour of the defendant. This interim opinion is in line with the decision of an EPO opposition division, the Rechtbank Den Haag (Case No. C/09/533354 / HA ZA 17-581; judgment available as Dutch original and inofficial English translation), the IP High Court of Japan and the U.S. CAFC. On the other hand, the German Federal Patent Court had revoked the German part of EP’508; an appeal before the Supreme Court is still pending.

Sandoz’s logo

Sandoz started from Jackman as closest prior art in the assessment of inventive step. With reference to Worzalla et al., Jackman describes experiments in which pemetrexed was administered alongside with folic acid. Further, phase I clinical trials had been reported in which pemetrexed was administered together with folic acid (Hammond et al.). In consideration of the biochemical pathways, Sandoz argued that it had been obvious to add vitamin B12 to said known combination.

Lilly’s logo

Eli Lilly of course disagreed. In Lilly’s view, the skilled person would not have pursued a combination of pemetrexed and folic acid, let alone to add vitamin B12. In real life, phase II clinical trials began with pemetrexed alone, irrespective of the experiments of Hammond et al. Toxicity of pemetrexed had intially been deemed controllable. It was only in the course of phase II clinical trials that the therapy scheme was switched because toxicity was found to be too severe.

A significant point of discussion was whether a skilled person would have been motivated to add vitamin B12 in light of some marker experiments. Niyikiza, the main inventor of the patent in suit, had published a report that described a correlation of pemetrexed toxicity with an unspecific marker (homocysteine), but not with the vitamin B12-specific marker MMA (methlymalonic acid). Accordingly, in Lilly’s view, a skilled person would not have been prompted towards the invention.

Reported by Andreas WELCH and Martin WILMING

BIBLIOGRAPHY

Case No. O2018_003 ¦ Hearing of 17 June 2019

Sandoz Pharmaceuticals AG
./.
Eli Lilly and Company

Panel of Judges:

  • Dr. Daniel ALDER
  • Dr. Roland DUX
  • Marco ZARDI

Judge-rapporteur:

  • Dr. Roland DUX

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

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

Representative(s) of Defendant:

ANNOUNCEMENT

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PATENT IN SUIT

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What’s the point about pointer?

Reading time: 4 minutes

Case No. O2016_017 | Hearing of 3 June 2019

The patent at stake is MundiPharma‘s EP 2 425 825 B9; see EPO Register and Swissreg. Besides Acino Pharma AG, the plaintiff in the present proceedings, Develco is also fighting this patent in parallel proceedings; see this Blog here.

EP’825 pertains to a combination of oxycodone hydrochloride (in an amount of 10 to 150g) and naloxone hydrochloride (in an amount of 1 to 50g), in a weight ratio of 2:1.

This combination is an analgesic drug that is available as modified-release tablets under the trade name Targin® by MundiPharma. Oxycodone is an opioid that has pain-relieving effects. Naloxone opposes the effects of opioids but is poorly absorbed when given orally; it stays within the gastrointestinal tract and reduces the local side effects of oxycodone.

Acino’s logo

Acino seeks annulment of EP(CH)’825 for various reasons, i.e. undue extension of subject-matter, non-enablement and invalidity of the priority claim. On the merits, Acino argues that EP’825 is not novel over WO 01/58451 A1, and that it is obvious in view of WO 01/58447 A1 (if the claim to priority is invalid) or in view of WO 02/092060 A1. Further documents referred to by the plaintiff in the assessment of obviousness are US 3,966,940, US 3,773,955 (erroneously referred to as US 3,773,995 in the announcement) and a paper of Skarin (most likely this one).

MundiPharma’s logo

Defendant / patentee MundiPharma countersued for infringement.

It was evident from the pleadings that the expert opinion of the judge-rapporteur had held that the patent was invalid for undue extension of subject-matter. Note that the first instance decision at the EPO (11 December 2018) came to the same conclusion, but an appeal is still pending at the EPO.

The hearing has again been thematically structured, similar to O2016_016. I could only attend until noon, and not even the most controversial issue of undue extension of subject-matter had been finished. Still, I believe that the major issues had already been raised at that time. Patentee had submitted that if the ‘pointer concept‘ in the assessment of whether or not sth is clearly and unambiguously disclosed in the application as filed would be properly used, no undue extension of subject-matter had occured. The ‘two lists concept‘ must not be used as an end in itself, but it is rather only the so-called gold standard that applies (clear and unambiguous disclosure in the application as filed, in the skilled persons understanding).

It will be very interesting to see how this will play out. Stay tuned.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_017 | Hearing of 3 June 2019

Acino Pharma AG
./.
MundiPharma Medical Company

Panel of Judges:

  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Hannes SPILLMANN

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Acino:

Representative(s) of Mundipharma:

  • Dr. Simon HOLZER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters

ANNOUNCEMENT

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Fumarate and phosphate: Same same, but different?

Reading time: 6 minutes

Case No. O2017_023 | Decision of 3 May 2019

DISCLOSURE NOTICE

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

This case is about an alleged infringement of Gilead’s SPC C00915894; the basic patent is EP 0 915 894 B1 (see EPO Register and Swissreg). Gilead’s products are Truvada® and Atripla® which are pharmaceuticals for the treatment of HIV-1 infection.

The present main proceedings are following-up on summary proceedings S2017_006 when the FPC granted interim injunctive relief; see this Blog here. Validity of the SPC was not an issue anymore, this had already been affirmed by the Supreme Court; see this Blog here.

The dispute is all about whether or not the scope of an SPC that specifically refers to a unique salt form does extend to other salts; we had reported about the main hearing in this matter on this Blog here. The SPC concerns tenofovir disoproxil fumarat + emtricitabin (emphasis added) . Mepha’s attacked generics (Swissmedic MAs No. 66181 and 66217)  instead comprise tenofovir disoproxil phosphate.

Now, is that still the ‘product’ in the sense of Art. 140d PatA?

The decision holds in ¶26-27 that in order to not frustrate the objective of an SPC the understanding of the term ‘product’ in the context of an SPC must be aligned with the understanding of the same term in the context of the Therapeutic Products Act (TPA). Thus, the scope of protection is not strictly limited to what is named in the MA or in the SPC, but rather extends to derivatives, salt forms, etc. which do not differ significantly in their properties with regard to safety and/or efficacy. In other words, the decision holds that the scope of protection extends to everything for which a simplified approval according to the TPA can be obtained (see Swissmedic Guidelines, ¶1.1.1).

Thus, the decision holds that the ‘product’ in the sense of Art. 140d PatA is (¶28):

Emtricitabine plus tenofovirdisoproxil fumarate and all derivatives (i.e. in particular all salt forms) thereof, provided that they have the same pharmacological effects.

Since the attacked embodiments had been approved by Swissmedic by way of a simplified approval, the decision holds that they are presumed to have the same pharmacological effects and are thus the same ‘product’ in the sense of Art. 140d PatA.

For the sake of completeness, the decision also analyses the alleged infringement under the DoE (¶33 et seqq.). As proposed by some scholars, the scope of protection of an SPC is determined by the content of the claims of the basic patent, whereby the description and the drawings are to be used for interpretation, and the Protocol on the Interpretation of Art. 69 EPC is also to be observed. Since the SPC is only product-related and purpose-related, the patent claim of the basic patent is to be defined artificially as if only the active substance designated in the certificate were mentioned, for the approved use of the active substance as a pharmaceutical. The description and drawings of the basic patent shall be used for the interpretation of the claim so formulated.

In brief, the decision holds that the three questions of the Swiss test for infringement under the DoE are to be answered in the affirmative, i.e. that the ‘same effect’ (Gleichwirkung), ‘obviousness’ (Auffindbarkeit) and ‘same value’ (Gleichwertigkeit) are given. Noteworthy, the decision holds that one cannot assume that the SPC holder made a purposive selection in favor of one salt over other salts mentioned in the specification. If one were to see this differently, equivalence for SPCs in different salt forms would in fact be excluded if only one specific salt had been used for the MA and the wording of the SPC. On the contrary, on the basis of an objective reading of the patent specification and in the knowledge that such an artificial claim is to be interpreted for the scope of protection of an SPC, the skilled person will readily assume that other salts,  because they are mentioned in the description, are not excluded from the scope of protection (¶43):

Im Gegenteil wird der fachkundige Dritte bei objektiver Lektüre der Patentschrift und im Wissen darum, dass ein solcher fiktiver Anspruch für den Schutzbereich eines ESZ auszulegen ist, in einer solchen Situation gerade davon ausgehen, dass natürlich diese anderen Salzformen, weil sie in der Beschreibung genannt werden, nicht vom Schutzumfang ausgeschlossen sind.

In any event, the decision holds that there was no specific, individualized disclosure of tenofovir disoproxil phosphate in the specification of the basic patent.

LDCs

Injunctive relief was thus granted. However, Mepha shall be permitted to export products that it had on stock when interim injunctive relief had been granted to any of the least developed countries, LDCs, according to the list of the the United Nations.

The decision is still open to appeal.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_023 | Decision of 3 May 2019

Gilead Sciences Inc.
./.
Mepha Pharma AG

Panel of Judges:

  • Dr. Christoph GASSER
  • Dr. Tobias BREMI
  • Marco ZARDI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)
  • Dr. Michael RITSCHER (MLL)
  • Dr. Andreas SCHÖLLHORN (LSP), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

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Hip Hip Hooray: Stemcup and Implantec litigating about the ANA.NOVA hybrid socket

Reading time: 8 minutes

Case No. O2016_012 | Hearing of 29 May 2019

The patent in suit is EP 1 411 869 B1; see Swissreg and EPO Register for further information. Stemcup alleges that Implantec‘s ANA.NOVA® hybrid socket infringes the patent (either literally or under the DoE):

Implantec’s ANA.NOVA® hybrid socket website

See Implantec's ANA.NOVA® product flyer for further information about the allegedly infringing product.

Defendant (1) is the Austrian manufacturing company of the allegedly infringing ANA.NOVA® hybrid socket, which defendant (2) is then placing on the Swiss market.

The relevant claim 2 of EP’869 as initially granted reads as follows:

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

ANA.NOVA® hybrid socket

To get a better idea of what is meant by ‘knock-in web (21)’ (or ‘Einschlagsteg’ in German), please see the winglets on the outer shell of the allegedly infringing product on the right.

According to the patent, the locking elements can twist the cup by a few degrees when the implant is driven in. In the plaintiff’s view, this is decisive for the patent in suit. Defendants contest the infringement and argue for invalidity as a plea in defense.

This case surfaced for the first time back in March 2017; see this Blog here. But one got no idea of the subject-matter at stake since that order only related to a procedural issue. The main hearing had been announced for 3 October 2018 for the first time, but it was cancelled. The silence was deafening since then. Finally, the main hearing took place on 29 May 2019, as announced.

The hearing

It is rare that a presiding judge at the FPC opens the main hearing with a remark that the case is somewhat special. But this case is indeed a bit out of the ordinary. In my understanding of the pleadings, the expert opinion of the judge-rapporteur had been quite positive for the plaintiff re infringement and validity — except for an undue extension of subject-matter in claim 2 as asserted.

Closed docket

Now, what to do after the formal closure of the file?

The plaintiff partially renounced EP’869 at the IPI, to overcome the objection. The partial renouncement has been published on 15 August 2018.

Claim 2 after the partial renouncement reads as follows (inofficially translated; changes marked-up):

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

A first version of this post erroneously mentioned that only ‘at least’ had been deleted. This has been corrected in the above.

What had been uncomplicated on the merits at the IPI caused a lot of trouble in the pending proceedings at the FPC: The panel of judges had been enlarged to five judges, with the clear intention to render a decision on all aspects of the case. Consequently, the judge-rapporteur gave a second, updated expert opinion which, in my understanding, was again very positive for the plaintiff’s position re infringement and validity, but did not expand any further on the tricky issue of admissibility of the partial renouncement.

Noteworthy, the plaintiff’s statement of claim had not been changed. It was not in dispute between the parties that it was not a question of an amendment to the statement of claim; Art. 227 CPC. It’s all about whether or not the partial renouncement of the patent at this stage of the proceedings was admissible as a proper novum or improper novum, according to Art. 229 CPC.

The plaintiff holds that the partial renouncement is a proper novum that has been timely introduced into the proceedings, i.e. immediately upon registration with the IPI.

On the other hand, defendants essentially argue that a new fact created by the plaintiff’s own volition and at a time / to an extent of his own choice cannot be considered a proper novum, and that the plaintiff acted much too late in any event: The request for partial renouncement had been filed only about nine months after the defendants had raised the issue of an undue extension of subject-matter with their rejoinder. Defendants requested that the case be dismissed as groundless since the patent in suit does not exist anymore in the form as it once had been asserted.

Some further procedural issues arose with respect to admissibility of certain elements of defendants’ comments on the second expert opinion of the judge-rapporteur. Plaintiff requested in the hearing that it should be decided on this issue beforehand, for him to be in a position to comment the remainder, if any. This request was denied.

Further, defendants had prepared a slide deck to illustrate certain aspects of their pleading concerning the alleged infringement (presumably some tricky geometric concepts of how to properly measure a gradient, according to the patent in suit), and printouts of this slide deck had been handed over to the plaintiff and the judges before a break. Finally, however, the slide deck had not been used at all: The presiding judge returned the handouts to defendants’ counsel after the break and noted that the court will not expose itself to the accusation that it accepted novae into the file. Still, I well understood from the pleadings that defendants argue for non-infringement because the gradient in the attacked embodiment is outside of the claimed range. It’s a borderline case, apparently: Plaintiffs allege that the gradient is 84.7° (i.e. within the claimed range), while defendants allege that the gradient is 85.6° (i.e. outside the claimed range).

Unfortunately, I had to leave at about 2:15 pm and thus don’t know whether the parties finally had settlement talks. But, frankly, I would be surprised if the parties have settled.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_012 | Hearing of 29 May 2019

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

Panel of Judges:

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

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Stemcup :

Representative(s) of Implantec:

  • Dr. Michael RITSCHER (MLL)
  • Noelle STALDER (MLL)
  • Dr. Martin MÜLLNER (Müllner Katschinka), assisting in patent matters
  • Werner Roshardt (Keller), assisting in patent matters
  • Dr. Susanne FINKLENBURG (Keller), assisting in patent matters

ANNOUNCEMENTS

Main hearing of 29 May 2019:

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Main hearing of 3 October 2018 (cancelled):

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The FPC’s cancellation note:



PATENT IN SUIT

EP 1 411 869 B1 (as initially granted):

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CH/EP 1 411 869 H1 (after partial renouncement):

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NOTES FROM THE HEARING

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