Request for recusal of a reporting judge held unfounded (O2012_022 cont’d)

Case No. O2012_022 ¦ Decision of 16 January 2013 ¦ “Auszug aus dem Beschluss Abweisung Ausstandsbegehren”

HEADNOTE

Art. 47 CPC: A request for recusal cannot be based on factual circumstances that are not yet reality and for which it is not yet clear whether they will ever come into existence.
(Non-official translation from German into English language)

Two orders in procedural matters have already been published by the FPC in this case; see this blog here and here. Moreover, a hearing is scheduled for 09 July 2013. It was only known by now that the plaintiff sought for a declaratory judgement of nullity in the field of pharmacy. From the present decision, it is at least clear that this case pertains to the field of androgenic alopecia (a specific kind of hair loss); cf. reasons 3 of the decision. No further details on the merits of the case are publicly available by now.

The reporting judge had provided his assessment of the case on September 16, 2012. With reply of October 26, 2012, the defendant put essentially the following requests on file:

  1. The assessement of the reporting judge shall not be relied on.
  2. A court expert with medical or pharmaceutical background, specifically in the field of androgenic alopecia, shall be appointed.
  3. The parties shall be given the opportunity to comment on the questionnaire.
  4. The reporting judge shall recuse or has to be excluded.

The present excerpt of the decision only deals with the fourth request, i.e. recusal of the reporting judge. It is the first decision being published by the FPC concerning a request for recusal of a judge (based on Art. 47 CPC).

Defendant argued that the reporting judge cannot be expected to be unbiased anymore when it comes to the assessment of the opinion provided by the court expert (since the reporting judge had already provided a written assessment himself); this would contravene the guidelines established by the Supreme Court e.g. in the case no. 4A_3/2012 (r. 2.3).

The Administrative Board of Judges of the FPC is competent to decide on such requests (Art. 11 PR-PatC). The ratio of the decision is clear-cut: It was not established yet whether a court expert will be appointed at all. Thus, the fourth request was held unfounded. Evidently, the fourth request was not construed under the condition of at least the foregoing requests 1. and 2. being granted.

As a sidenote, the Administrative Board of Judges briefly commented on the question whether the defendant should have acted earlier. Apparently, the defendant doubts that the reporting judge is technically competent enough to properly assess the specific questions at stake in the field of androgenic alopecia. However, these doubts were only brought forward when the assessment of the reporting judge was already established, but not when the reporting judge had been appointed. It thus remains to be seen whether the defendant will still be heared with his other request pertaining to the appointment of a court expert. This, however, is a question on the merits of the case which has not to be decided by the Administrative Board of Judges.

This decision of the Administrative Board of Judges is already res judicata.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_022 ¦ Decision of 16 January 2013 ¦ “Auszug aus dem Beschluss Abweisung Ausstandsbegehren”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Administrative Board of Judges of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Second Ordinary Judge)
  • Frank SCHNYDER (Vice President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

Download (PDF, 13KB)

O2012_021: Federal Supreme Court partly overruled decision of the FPC

Case No. 4A_443/2012 ¦ Decision of 05 February 2013 ¦ “Appeal against the decision of the Federal Patent Court of 07 June 2012

For the background of the case and the underlying decision of the FPC in detail, please see this blog here. In brief, the FPC had ruled that it is competent to decide on claims for injunctive relief and damages, pertaining to infrastructure for collecting the performance-related heavy vehicle fee (HVF) levied in Switzerland.

The Swiss Confederation lodged an appeal against the decision of the FPC. For now, only the issues of competency of the FPC are at stake.

The Supreme Court ruled as follows:

1.  Competency of the FPC with respect to injunctive relief

The Supreme Court stressed that a patentee’s rights are emanating from the Federal Act on Invention Patents which is part of the civil law. A patent is a property in the sense of Art. 26(1) of the Federal Constitution and as such is protected by the constitutional principle of guarantee of ownership (BGE 126 III 129, reasons 8a). The Confederation can be patentee, and on the other hand it has to respect patent rights. Consequently, the Confederation is not entitled to infringe a patent, even if it acts in public interest (reasons 2.3.1).

Das Gemeinwesen wird somit auch im Rahmen der Erfüllung öffentlicher Aufgaben vom Ausschliesslichkeitsrecht nach Art. 8 PatG erfasst und ist insoweit grundsätzlich dem patentrechtlichen Unterlassungsanspruch (Art. 72 i.V.m. Art. 66 PatG) ausgesetzt.

Thus, the Supreme Court confirmed: The Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA).

In a detailed obiter dictum (reasons 2.3.2 ff), the Supreme Court also expanded on the competency of the FPC to decide on a claim of the Confederation for a compulsory license in the interest of the public. In case of public, non-commercial use it is not mandatory that the Confederation tries to obtain a license under market-reasonable conditions prior to filing a suit to be granted a compulsory license (Art. 40(1) and Art. 40e of the Federal Act on Invention Patents; similar to Art. 31 lit. b TRIPS). The FPC has exclusive jurisdiction in such cases (Art. 26(1) lit a PatCA). Further, the Supreme Court briefly touched on the topic whether the injunctive relief (as a right conferred by a patent) could be subject to expropriation under Art. 32(1) Federal Act on Invention Patents, but did not provide further guidance in this respect.

2.  Competency of the FPC with respect to damages

The plaintiff / respondent requested damages of CHF 62’466’022,85 based on civil law (Art. 73(1) Federal Act on Invention Patents; Art. 41 ff, Art. 62 ff and Art. 423 Code of Obligations). However, the Confederation is only liable under civil law in case of commercial activities, not in case of activities that concern a public function. The Supreme Court held that the use of the infrastructure and the collection of the HVF is undoubtedly carried out by the Confederation in a public function (see also BGE 128 III 76, reasons 1a in this respect).

Die strittige Verwendung der technischen Infrastruktur […] erfolgt unbestreitbar im Rahmen der Wahrnehmung einer öffentlichen Aufgabe. Eine gewerbliche Tätigkeit, die grundsätzlich Privaten wie Nichtprivaten offensteht und bei welcher die Erzielung von Gewinn eine Rolle spielt, liegt beim fraglichen Betrieb der technischen Infrastruktur nicht vor […].

Consequently, the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_443/2012 ¦ Decision of 05 February 2013 ¦ “Appeal against the decision of the Federal Patent Court of 07 June 2012

Swiss Confederation (represented by the Federal Department of Finance) ./. Robert Bosch GmbH

Subject(s):

  • Patent infringement
  • Competency

Composition of the Board of the Supreme Court:

  • Dr. iur. Kathrin KLETT (President)
  • Bernard CORBOZ
  • Dr. iur. Gilbert KOLLY
  • Christina KISS
  • Dr. iur. Martha NIQUILLE
  • Dr. iur. Matthias LEEMANN (Court Secretary)

Representative(s) of Appellant:

Representative(s) of Defendant:

Request for information and accounting granted in an action by stages

Case No. O2012_036 ¦ Partial decision of 13 February 2013 ¦ “Teilurteil Auskunft und Rechnungslegung nach abgegebener Unterlassungserklärung”

This case pertains to power plug adapters that allegedely infringe EP 1 393 417 B1. An essential feature is that various plugs can be slid out of a housing, but only one at a time; cf. Fig. 8 and 9 of the patent in suit (click to enlarge):

Figures 8 and 9 of <a href="http://www.patentlitigation.ch/wp-content/uploads/2013/02/EP1393417B1.pdf" target="_blank">EP 1 393 417 B1</a>

The plaintiff WorldConnect AG sells power plug adapters according to the patent in suit under the brand SKROSS®. The allegedly infringing power plug adapter is identified as “CH-685” in the decision, offered / sold by the defendant. An article with this identifier can still be found on the website pearl.ch, as well as the manual, but it is explicitly no longer available in Switzerland (click to enlarge):

CH-685 power plug adapter
CH-685 Travel Adapter
Source (visited February 27, 2013):
http://www.pearl.ch/ch-a-CH685-5452.shtml

The plaintiff confronted the defendant with the alleged infringement on July 1, 2011. On September 14, 2011, the defendant complied and submitted a cease and desist agreement. Moreover, the defendant provided some details on suppliers and quantities of received / sold items with letter of October 6, 2011. Finally, with letter of November 30, 2011 the defendant declared that 428 items had effectively been sold (after deduction of returns). The total turnover amounted to CHF 3’922,99. The defendant then paid the plaintiff a lump-sum of CHF 2’500,–, “in order to not end up in a law suit” (voilà, here we are …). An additional amount of CHF 5’346,– for incurred costs of an assisting patent attorney  was not compensated; in the defendant’s view, these costs could have been avoided by the plaintiff.

The plaintiff filed the suit on June 5, 2012 as an action by stages (Stufenklage), in accordance with Art. 85 CPC: Information and accounting for evidence was requested in first place, to enable the plaintiff to quantify the amount being requested in the main request, i.e. the recovery of profits of the defendant originating from illegitimate sales of infringing products. The duty of disclosure is based on Art. 66 lit. b of the Federal Act on Invention Patents (note that this duty is not only given vis-a-vis the court as the mere wording of Art. 66 lit. b of the Federal Act on Invention Patents might suggest, but also vis-a-vis the patentee; cf. Heinrich, PatG/EPÜ, 2nd ed., Bern 2010, para. 7).

The defendant submitted that the request for information and accounting was unfounded inasmuch as such information was already provided. Further information could only be provided on the basis of the electronic merchandise planning and control system. The defendant had offered that an independent accountant could review and approve the electronic data, but the plaintiff had not been responsive to this offer. In essence, the defendant alleged that the plaintiff’s request for information and accounting was now in bad faith, in view of the defendant’s prior offer.

In its decision, the FPC summarizes that neither the right of action of the plaintiff (as the exclusive licensee) nor the patent infringement as such was contested. It was not even contested that a profit had been made by the defendant; only the actual amount was in dispute. Thus, all prerequisites for the defendant’s duty of disclosure were given — which is an obligation to deliver (by the defendant), not an obligation to collect (by the plaintiff). Consequently, the defendant’s argument failed. Subsequent assessment of the disclosed documents is a matter of consideration of evidence by the court.

With respect to the extent of the duty of disclosure, the FPC stated that the disclosed information needs to put the plaintiff in a position to quantify the amount to be demanded in the main request. The defendant did not object in detail to the requests for information and accounting. The defendant only submitted that individual sales in the shop cannot be allocated to specific customers; this was acknowledged by the FPC. Moreover, the FPC corrected an obvious error in the request (“manufactured by” was replaced by “sold by”, since it was not alleged by the plaintiff that the defendant had manufactured the infringing items himself), and some redundancies were omitted.

The order on information and accounting was granted essentially as requested, with threat of punishment under Art. 292 Criminal Code (Art. 236(3) in conjunction with Art. 343(1) lit. a CPC). As an exception to the rule, a decision on the costs of this partial decision will be taken in the final decision.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_036 ¦ Partial decision of 13 February 2013 ¦ “Teilurteil Auskunft und Rechnungslegung nach abgegebener Unterlassungserklärung”

WorldConnect AG ./. Pearl Schweiz GmbH

Subject(s):

  • Patent infringement

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Hans-Ulrich Pfeiffer (Pfeiffer Rechtsanwälte, Freiburg (Germany)), with mailing address at the defendant in Switzerland

Case not considered for reasons of improper requests / Assessment of compensation

Case No. O2012_004 ¦ Decision of 24 August 2012 ¦ “Nichteintreten wegen ungenügendem Rechtsbegehren; Bemessung der Parteientschädigung”

This case started back in March 2010 at the cantonal court of Grisons. Written proceedings were already completed before the case was transferred to the FPC in December 2011. No settlement could be reached in a hearing on 23 May 2012. The FPC then submitted the opinion of the reporting judge to the parties: It was held that the patent – to the extent it was valid – was not infringed. The parties were invited to provide their comments. Within the same time limit, the plaintiff was invited to present a more precise request; the FPC explicitly noted that the case would otherwise not be considered.

Two aspects of this case are of particular interest:

1.  Non-consideration of the case because of insufficient wording of the requests

From a technical point of view, this case deals with an alleged infringement of EP 1 183 218 B1, pertaining to lightweight concrete. In brief, it was claimed that a lightweight aggregate is included which

[…] exhibits a screen-analysis curve that is graded between 0 and the largest grain size with at least 3 fractions, preferably more than 5 fractions, in particularly preferred manner at least 8 fractions.”

The initial requests filed by the plaintiff literally recited this feature of the claim, with or without the preferred ranges. In their counterstatement, the defendants objected to the unspecific wording of the requests. In reply, the plaintiff presented an additional request, wherein the lightweight aggregate was named as

Technopor Perimeter 50

(Author’s note: A leaflet with some details about this product can be found here, in German language only.)

The patent-in-suit fails to clearly define the term “grain size”, and the parties were of dissenting opinion on the meaning of this term. One may only conclude from the patent-in-suit that a grain size may well comprise a certain range of actual grain sizes. However, neither a clear definition of the breadth of such a range is given, nor the necessary amount of grains to be found in such a range in order to be considered as a grain size.

The plaintiff presented the following data of the grain sizes of Technopor Perimeter 50 (it was not contested that this product was used by the defendant):

The left column contains the mesh sizes of the screen plates (Maschenweite); the middle column shows ranges of the through fraction percentage of Technopor Perimeter 50 passing the respective screen plates (Siebdurchgang); the right column illustrates a typical value within these ranges. Referring to this data, the plaintiff alleged that it showed six grain sizes, but also admitted that there maybe more grain sizes if a finer distinction would have been made.

Thus, the FPC held that the request is evidently not specific enough for a bailiff to enforce the prohibition by mere factual inspection, but that interpretation of technical terms would still be required. The trade name Technopor Perimeter 50 did not help, either, since a product trade name can be changed, and/or a different product can be sold under the same name. Thus, a product trade name cannot replace the detailed description of the technical embodiment of the allegedly infringing product; cf. BGE 131 III 70 E3.3 and earlier posts on this topic (S2012_002 and S2012_003) for further reference.

The plaintiff did not further specify the requests, despite being invited to do so. Consequently, the FPC did not consider the case.

The FPC – again – clearly set out the rules for drafting proper requests, in accordance with the case law of the Federal Supreme Court. First, a proper claim feature analysis of the claim(s) is to be done. Next, the actual implementation of each and every claim feature of the alleged infringement is to be established and to be included into the request.

(Author’s note: It might perhaps have helped the case at least to be considered by the FPC if the plaintiff had relied on the ranges of typical through fraction percentages at hand in order to draft a more precise request.)

2.  Compensation of costs

The compensation for professional legal representation is governed by the value of the claim. The parties had agreed on a value of the claim of CHF 100’000,–.

According to the significance, difficulty and extent of the dispute and the attorney’s time spent for services rendered, a value of the claim in the range of CHF 50’000,– to 100’000,– shall correspond to a compensation in the range of CHF 10’000,– to 24’000,– (Art. 4 and Art. 5 CostR-PatC). However, there is some discretion to reduce or increase the compensation in exceptional cases (Art. 8 CostR-PatC).

The plaintiff argued that the compensation should be fixed at the lower side since the court finally did not consider the case. In contrast, the defendant asserted attorney costs of CHF 111’000,– (corresponding to 250 hours spent on the case), and yet further CHF 51’000,– (corresponding to 135 hours spent on the case) for the patent attorney’s costs. These costs incurred were harshly criticised by the FPC as “exorbitant”, “neither necessary nor useful” and “smashing the scale”. The FPC highlighted that the case was a relatively easy one; it took the reporting judge only eight pages to assess both validity and infringement issues. Moreover, neither a main hearing was held, nor was a procedure of taking evidence necessary.

Finally, the FPC fixed the compensation for attorney costs to CHF 24’000,–, thus exactly in accordance with Art. 5 CostR-PatC. An additional compensation for the assistance of the patent attorney was fixed to CHF 16’000,–.

(Updated 19 September 2012; author’s note: A previously published version of this decision erroneously indicated the compensation to be paid as CHF 30’000,–, in total. Apparently, a rectified version (now indicating CHF 40’000,–) was submitted to the parties two days after dispatch of the inital version. Unfortunately, the rectified version does not give any hint towards this error being corrected.)

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_004 ¦ Decision of 24 August 2012 ¦ “Nichteintreten wegen ungenügendem Rechtsbegehren; Bemessung der Parteientschädigung”

Misapor AG ./. (1.) Danko BASURA; (2.) Beton Val Mulin AG Schnaus

Subject(s):

  • Patent infringement

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Vice President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Parties for the first time agreed to use English in FPC proceedings

Case No. O2012_037 ¦ Order of 30 July 2012 ¦ “Parteisprache Englisch, Verbindlichkeit der Wahl”

A major advantage of the Act on the FPC (PatCA) in an international environment is that the parties can agree to use English language; Art. 36(3) PatCA. However, even though the parties may use the English language, one of the official languages of Switzerland is still the language of the proceedings. The FPC will always issue its decision in the language of the proceedings (Art. 6(3) PR-PatC).

Parties to FPC proceedings now for the first time agreed to use the English language:

The plaintiff is native Italian speaker, but his representatives are native German speakers. The plaintiff requested in his writ that German language shall be established as the language of the proceedings (Art. 36(1) PatCA, Art. 6(1) PR-PatC), but also indicated that he would agree to English language being used in subsequent motions of the parties. The FPC established German as the language of the proceedings and the defendant was invited to file the counterclaim.

The defendant also agreed to the English language being used by the parties. Consequently, the FPC took due note of the parties’ choice of the English language for their further motions. This mutual consent of the parties being given, no further approval of the FPC is necessary in this respect (Art. 6(3) PR-PatC). However, the FPC held that this choice of the English language is binding, i.e. a waiver to use an official language of Switzerland in later motions and oral proceedings again.

Noteworthy, the FPC held in an obiter dictum that parties might agree on the English language even before FPC proceedings are initiated. In this case, already the writ could be filed in English language.

Reported by Martin WILMING


BIBLIOGRAPHY

Case No. O2012_037 ¦ Order of 30 July 2012 ¦ “Parteisprache Englisch, Verbindlichkeit der Wahl”

(not identified) ./. (not identified)

Subject(s):

  • Financial reporting and monetary claim

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRĄNDLE (President, Single Judge)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Stefano Codoni (Poledna Boss Kurer)

Expert opinions not being sealed / no further explanation of prior order of the FPC (O2012_022 cont’d)

Case No. O2012_022 ¦ Order of 31 July 2012 ¦ “Ablehnung Erläuterung”

This order of the FPC relates to a prior order of 03 May 2012, commented in a separate post. The earlier order of the FPC dealt with the presentation of new evidence / nova. In brief, the FPC did not admit the expert opinions from parallel proceedings in other countries into the proceedings – except as evidence for the conclusions drawn in these expert opinions which were explicitly referred to in the writ of the defendant.

Subsequently, the plaintiff requested that the expert opinions were to be sealed until a decision of the whole case has become final, in order to prevent that a member of the board of the FPC or a court expert consults these expert opinions any further. The plaintiff argued that the human nature could otherwise prompt a non-permanent judge or a court expert to revert to these expert opinions – contrary to the gist of the prior order of 03 May 2012.

In reply, the defendant requested an explanation by the FPC as to what extent the expert opinions may still qualify as (i) evidence for statements made in earlier writs of the defendant (except for the writ accompanying the expert opinions); and (ii) counter-evidence for statements made in earlier writs of the plaintiff. With respect to the statements made in the writ accompanying the expert opinions, the defendant argued that the FPC must have access to the expert opinions as such, in order to verify the respective citations. However, the parties evidently had a different understanding of whether or not the expert opinions may still qualify as (counter-) evidence for statements made in other writs of the defendant and the plaintiff.

The FPC now reiterated that the prior order of 03 May 2012 only pertained to the writ accompanying the expert opinions, without any further necessity of explanation. Only if facts (not points of law such as e.g. novelty, inventive step or undue extension of subject matter) would remain under dispute which are legally relevant, a procedure of taking evidence will be conducted in accordance with Art. 150 ff. CPC. If the defendant then would rely on the expert opinions, the FPC would have to judge admissibility of this evidence.

The FPC further held that there is no need to seal the expert opinions. These opinions will not be further consulted anyhow, for the time being: Since it is beyond dispute between the parties that the conclusions of the two expert opinions were correctly cited by the defendant in the writ, there is no need for the FPC to revert to the evidence as such.

Kurz, das Fachrichtervotum wird erstattet werden, ohne dass Einsicht in die beiden Gutachten genommen wird, weil sie weder – über die Noveneingabe hinaus – als Parteivorbringen noch, im gegenwärtigen Stadium, als Beweismittel zu berücksichtigen sind.

Consequently, the requests of both the plaintiff and the defendant were dismissed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_022 ¦ Order of 31 July 2012 ¦ “Ablehnung Erläuterung”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Allocation of costs and compensation when a case has become groundless

Case No. O2012_025 ¦ Decision of 16 July 2012 ¦ “Gegenstandslosigkeit; Kosten- und Entschädigungsfolgen”

This case pertains to EP 1 175 904 B1 of Merck & Co., Inc., claiming the

[u]se of alendronate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human as a unit dosage comprising about 70 mg of the alendronate compound, on an alendronic acid active weight basis, according to a continuous schedule having a once-weekly dosing interval.

Further details about this patent can be derived from the European Patent Register and the complete file wrapper at the European Patent Office (EPO).

The Swiss part of this European patent was challenged in two separate nullity suits before the Commercial Court of the Canton of Zurich (HG080018 and HG080082). The present case, which is based on the later one of these nullity suits, was stayed by the Commercial Court until the earlier one has been decided and become final. It was tranferred to the FPC in January 2012.

A first aspect of this case pertains to restitution under Art. 148 CPC, granted in accordance with widespread cantonal practice in similar circumstances: The FPC (erroneously) decided to not consider the case since the plaintiff had failed to submit the advance payment of litigation costs. However, it turned out that the plaintiff in fact had submitted the advance payment in time; the defendant agreed to the restitution. Accordingly, the initial decision of the FPC to not consider the case was set aside.

Opposition and appeal proceedings were pending with the EPO, too. A decision of an EPO Board of Appeal dismissed the appeal of the patentee / defendant and confirmed the revocation of the patent in its entirety. This decision was issued before the defendant had to submit the counterstatement with the FPC. The present case had thus become groundless (BGE 109 II 165) and was to be dismissed; Art. 242 CPC. Litigation costs were to be allocated at the discretion of the FPC; Art. 107 para. 1 lit. e CPC. The FPC held that the defendant at its sole discretion decided to lodge an appeal against the decision of the Opposition Division of the EPO to revoke the patent in suit. Due to the suspensive effect of such an appeal, the patent remained in force. Moreover, the plaintiff had sufficient reason to believe that the defendant was upon to lodge a claim of infringement. Since appeal proceedings with the EPO may be longsome, the FPC held that the present nullity suit was an adequate measure taken by the plaintiff. Consequently, the FPC (and likewise the Commercial Court of the Canton of Zurich in the case HG080018) decided to impose the litigation costs on the defendant and ordered a compensation of the plaintiff’s costs to be paid by the defendant.

Mit dem Beharren auf dem nichtigen Streitpatent hat die Beklagte diese dagegen gerichtete Nichtigkeitsklage verursacht, weshalb es angemessen erscheint, ihr die Kosten aufzuerlegen und sie zu einer Prozessentschädigung an die Klägerin zu verpflichten.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_025 ¦ Decision of 16 July 2012 ¦ “Gegenstandslosigkeit; Kosten- und Entschädigungsfolgen”

Spirig Pharma AG ./. Merck & Co., Inc.

Subject(s):

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Competency of the FPC at the borderline of public and civil law

Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”

This case pertains to the performance-related heavy vehicle fee (HVF) levied in Switzerland. The Robert Bosch LLC of Germany (plaintiff) is patentee of EP 0 741 373 B1, entitled “System for detecting the distance travelled by a vehicle in a given area”; cf. Fig. 4 for illustative purposes below.

O2012_021_EP0741373B1_Fig_4

In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement with the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable.

The Federal Act on Invention Patents contains two clauses concerning the restriction of patent rights due to public interest: Art. 40 pertains to the grant of a licence in public interest to use an invention when such a licence is, without sufficient reason, refused by the owner of the patent; such licence is to be asserted in civil proceedings. The second clause (Art. 32) provides for the whole or partial expropriation of a patent by the Federal Council, if public interest so requires. This measure is governed by public law, according to the Federal Act on Expropriation (Art. 16 ff.). The FPC held that both regulations are not applicable in this case since the defendant did not initiate any one of the said actions beforehand, but instead put up with the consequences of a potential patent infringement.

The FPC also expanded on the argument of the defendant that the use of the HVF-registering infrastructure is of sovereign character: It was held that the relation to assessable persons (towards whom the Swiss Confederation acts in sovereign manner) is to be distinguished from the relation to the plaintiff.

Furthermore, the defendant argued that the case is to be dealt with under public law as the HVF-registration system was installed in accordance with a public submission procedure. However, the FPC held that this does not qualify the case as a matter of public law because it cannot be investigated in public law proceedings whether the patent of the plaintiff is infringed or not.

Finally, the FPC considered the various criteria developed by the Federal Supreme Court to distinguish between litigations governed by public and civil law (cf. inter alia BGE 123 III 346, r. 1a; BGE 120 II 11, r. 2a). The FPC held that the plaintiff confronts the defendant as a coequal legal entity and that the requested legal remedies further support the assumption that civil law is to be applied to the present case.

Consequently, the FPC decided to consider the case as the competent court (Art. 59 para. 1 in conjunction with Art. 237 para. 1 CPC).

(Update 10 April 2013: This decision of the FPC was partly overruled by the Supreme Court; see this blog here.)

Reported by Martin WILMING and Jennifer BOESE

BIBLIOGRAPHY

Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”

Robert Bosch GmbH ./. Swiss Confederation (represented by the Federal Department of Finance)

Subject(s):

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Chairman)
  • Dipl. El. Ing. ETH Daniel VOGEL (Judge)
  • Dr. iur. Christoph GASSER (Judge)
  • Dr. iur. Christoph WILLI (Judge)
  • Dr. sc. techn. ETH Markus A. MÜLLER
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Substantiation of statements in writ by reference to physical records / applicable Procedural Code

Case No. O2012_022 ¦ Order of 3 May 2012 ¦ “Anwendbares Prozessrecht, Berücksichtigung ausländischer Gerichtsgutachten”

This nullity case regarding the Swiss part of a European patent filed on 18 July 2008 with the Commercial Court of the Canton of Zurich was transferred to the FPC on 17 January 2012. As of 1 January 2012, the FPC has become the competent court according to Art. 41 in conjunction with Art. 26 PatCA.

After transfer of the case, defendant submitted copies of extensive expert opinions requested by the German Federal Court of Justice and the District Court of Rome, Italy, in parallel proceedings and only briefly referred to their respective conclusions in his written submissions. Plaintiff argued that the expert opinions did not constitute evidence in terms of the Swiss civil procedural code (CPC). Further, plaintiff objected to these opinions being treated as defendant’s submissions as the experts’ technical considerations had been enclosed with but not referred to in defendant’s writ.

According to Art. 27 PatCA, the CPC is applicable in cases before the FPC. However, Art. 404(1) CPC states that the previously applicable procedural code (of the respective Canton) remains applicable to pending cases until proceedings within the respective instance are closed. There are no transitional provisions regarding pending cases that have been transferred from cantonal courts to the FPC; only the Guidelines on proceedings before the FPC (Art. 10(2)) hold that the CPC shall be applicable. It has now been decided that based on the fact that Art. 27 PatCA is a lex specialis with regard to Art. 404(1) CPC phone 8582562535 , it takes precedence over the latter. On entering into force of PatCA, the federal procedural code is to be applied to cases transferred to the FPC. However, the parties will be given an opportunity to make submissions pertaining to any issues that they did not need or were not able to make under the terms of the previously applicable cantonal codes of procedure (cf. Art. 10(3) of the Guidelines on Proceedings before the FPC).

As to the merits of the case, it was held that the foreign court expert opinions submitted by defendant were no court opinions in proceedings before the FPC. Likewise, the foreign court expert opinions are no private opinions since they were not commissioned by the defendant. Thus, court expert opinions from separate proceedings are physical records (Urkunden) in the sense of Art. 177 CPC, only. As such, they are formally to be treated like party submissions. As is the case for all party submissions, any statement made in the writ must be substantiated by indicating how the respective statement relates to the physical record on which it is alleged to be based:

In gleicher Weise wie bei Tatsachenbehauptungen hat eine Partei auch bei Privatgutachten oder Gutachten aus anderen Verfahren ihre darauf gestützten Ansprüche möglichst konkret, d.h. substantiiert zu behaupten. Behauptungen (auch wenn sie in Form eines Gutachtens aus einem anderen Verfahren vorgebracht werden) sind in dem Sinne “zu verknüpfen”, dass ohne weiteres und ohne unzumutbaren Aufwand ersichtlich ist, mit welchen Urkunden bzw. Beweisanträgen welche Tatsachen bewiesen werden sollen ([…]).

Facts that can merely be inferred from enclosures need not be considered by the court. In as far as specific passages within the opinions were not indicated to relate to defendant’s writ these opinions were regarded as inadmissible and were not considered.

Wie erwähnt, geht es nicht an, einen Sachverhaltskomplex (d.h. vorliegend die Schlussfolgerung von Gerichtsgutachten) zu schildern und sich zum Beweis am Schluss dieser Behauptungen pauschal auf einen Stoss Akten zu berufen ([…]).

Reported by Karin BÄTZ

BIBLIOGRAPHY

Case No. O2012_022 ¦ Order of 3 May 2012 ¦ “Anwendbares Prozessrecht, Berücksichtigung ausländischer Gerichtsgutachten”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Claim dismissed for lack of right of action

Case No. O2012_010 ¦ Decision of 28 March 2012 ¦ “Aktivlegitimation”

The patent in suit (Swiss patent CH 683 963 A5; cf. Fig. 4 below for illustrative purposes) pertains to an implant which serves for the stiff connection of vertebrae of the spinal column:

O2012_010_-_CH683963A5_Fig_4

The application was filed in 1988 by the defendant. In addition to Mr. Robert Mathys (jun.), Prof. Dr. Max Aebi was identified as an inventor. Mr. Aebi had assigned his rights to the invention to the defendant. In 2006, the plaintiff sued the patentee with the Cantonal High Court of Grisons, arguing that the patent was obtained in bad faith, since the defendant should have known that Mr. Aebi was not entitled to assign his rights to the invention. The plaintiff inter alia requested the assignment of a share of 50% of the patent, and as an auxiliary request that the patent be revoked.

Mr. Aebi was an employee of the plaintiff under public law when the invention was made,. At that time, the University of Berne was not yet a legal entity, but only an administrative unit of the department of education of the Canton of Berne. The FPC held that the University of Berne had no right of action: It was not proven that when it finally became a legal entity in 1996, any rights to the invention under dispute were in fact transferred to the University. The claim was dismissed already for this reason.

Inventions made by professors at Universities were not regulated by law in the Canton of Berne at the filing date of the patent in suit. In contrast, it was the prevailing opinion at that time in Switzerland that inventions made by professors of Universities did not qualify as employee inventions under Art. 332 of the Swiss Code of Obligations. In consequence, the FPC held that there was no legal basis of the plaintiff’s claim that Mr. Aebi’s invention was an employee’s invention belonging to the University.

In addition, there was no evidence that the defendant should have had any doubt about Mr. Aebi’s entitlement to assign his share in the invention. To the contrary, there were indications that the University of Berne was not interested in patents at all at the time when the patent in suit was filed. In consequence, it was not proven that the patent owner acted in bad faith; any assignment action thus had to be filed within two years after grant (Art. 31 para. 1 of the Federal Act on Invention Patents). The right in the assignment action was forfeited.

In light of the above, the FPC also held that the plaintiff was not entitled to a nullity action pursuant to Art. 26 para. 1 lit. d of the Federal Act on Invention Patents: Since co-ownership of the defendant was not under dispute, the plaintiff alone was not entitled to such action anyhow.

In the meantime, the decision has become final.

Reported by Andreas WELCH

BIBLIOGRAPHY

Case No. O2012_010 ¦ Decision of 28 March 2012 ¦ “Aktivlegitimation”

Universität Bern ./. AO Technology AG (formerly Synthes AG Chur)

Subject(s):

  • Patent assignment (eventualiter: Nullity)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dipl. Masch.-Ing. ETH André Georges WERNER (Judge)
  • Dr. iur. Christoph GASSER (Judge)
  • Prof. Dr. iur. Daniel KRAUS (Judge)
  • Dr. iur. Christoph WILLI (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Universität Bern:

Representative(s) of AO Technology AG (formerly Synthes AG Chur):

Obscurity of the claim: Case not considered

Case No. O2012_012 ¦ Decision of 20 February 2012 ¦ “Nichteintreten”

This is a somewhat weird case. The claim was not at all comprehensible. It only became clear that the plaintiff alleged to be a licensee of EP 1 449 391 B1, owned by Zoltan Pal. However, neither the defendant was identified, nor the alleged infringement or any details concerning the license contract. Anyhow, license fees of some hundred million CHF were alleged to be outstanding (creditor or debtor remained obscure). Not even a comprehensible request was presented. Some reference was made to a nullity suit in Germany against EP 1 449 391 B1, allegedly filed by Apple Inc., represented by Bardehle Pagenberg.

The FPC finally did not consider the case, in view of incomprehensibility of the claim (Art. 132 para. 1 and 2 CPC; Art. 23 para. 1 lit. a PatCA).

Anzufügen bleibt, dass es dem Kläger nicht etwa (im Sinne von Art. 69 ZPO) am Vermögen gebricht, sein Anliegen zu Papier zu bringen. Er schreibt gegenteils eloquent – aber er scheint nicht willens, sich an die prozessualen Vorgaben zu halten.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_012 ¦ Decision of 20 February 2012 ¦ “Nichteintreten”

(not identified) ./. (not identified)

Subject(s):

  • Patent

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of (not identified plaintiff):

  • (none)

Representative(s) of (not identified defendant):

  • (none)

No plaintiff: Case not considered

Case No. O2012_029 ¦ Decision of 6 February 2012 ¦ “Nichteintreten”

A claim for outstanding money was pending before the commercial court of the Canton of Zurich. On 26 January 2012, the case was transferred to the FPC, in accordance with Art. 41 PatCA. However, the FPC noted that the plaintiff was already cleared from the Commercial Register on 28 December 2011. Consequently, the FPC did not consider the case, in view of the absence of a plaintiff.

Fehlt es mithin an einer Klägerin, so ist auf die – noch verbleibende – Forderungsklage nicht einzutreten.

The decision has become final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_029 ¦ Decision of 6 February 2012 ¦ “Nichteintreten”

Strela Development AG (cleared) ./. Artemio GRANZOTTO

Subject(s):

  • Outstanding money

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)

(Former) Representative(s) of Strela Development AG:

Representative(s) of Artemio GRANZOTTO:

  • (none)