The (serious) soap opera, cont’d

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Case No. O2019_001 | Hearing of 24 January 2022

The background of this case has already been extensively discussed on this Blog here and here. The hearing earlier today was a continuation of the main hearing of 16 September 2020, with the parties’ closing submissions according to Art.  232 CPC focussing on the witness testimony of Mr. QUADE that had been obtained via judicial assistance of the local court of Alzey, Germany (worth a visit, apparently).

Werner & Mertz

Mr. QUADE was personally present at the FAC today, but did not attend the first round of pleadings because plaintiff offered that the court might address him directly for follow-up questions or clarifications. The President asked defendant‘s representative whether he would agree — which he did not. The President indicated that a formal comment on this will be given by the court only after deliberation (before the lunch break, the President announced that there is no room for interviewing Mr QUADE anymore).

In a nutshell, plaintiff stressed that Mr QUADE‘s testimony was backed-up by contemporary written documents, and that Ms Regine SCHNEIDER‘s testimony was clearly less credible.

Good Soaps

After a short break of about 20 minutes, defendant reminded that the burden of proof is on the plaintiff to establish that i) the invention had been made by its employee(s), i.e. when, where and how; ii) it had been communicated to the allegedly unlawful applicant; and iii) how that corresponds with the claims of the patent application in suit; see e.g. O2015_009. Defendant highlighted that Dr ENDLEIN of Werner & Mertz only recently received the Meyer-Galow award for the development of cleaning products on the basis of European plant-based surfactants. However, Dr Edgar ENDLEIN only joined the plaintiff in 2010 and the respective R&D project ‘Einsatz europäischer Tenside’ had only been started at Werner & Mertz in 2012, i.e. years too late. No mentioning of Mr QUADE in this project whatsoever.

Next, defendant exemplified how Mr QUADE gave testimony on critical issues only in an evasive manner, apparently in knowledge of the file and likely with the desired result in mind. Further, I understood from the pleadings that Mr QUADE had testified that it had been perhaps a little too early in 2009 for an internal invention disclosure notice («wohl auch noch ein bisschen früh»).

At one point, the President intervened and enquired how defendant would explain the content of a letter of Mr QUADE to Kolb, indicating that he sent an Ecover sample to Kolb. Notably, defendant’s representative hesitently expressed in plain language that defendant has serious doubts as to the authenticity of this letter. Defendant had no positive knowledge of this letter since Ms SCHNEIDER had already left Kolb at that time.

As to the question of whether or not Ms SCHNEIDER had already been aware of rapeseed MEE before the meeting with Mr QUADE, Kolb (as a third party) on defendant’s request provided an internal memorandum that predates the meeting of 27 August 2009, indicating that Ms SCHNEIDER had been well aware of the fact that Ecover contained MEE with a chain length of seven:

Ecover, which is based in Belgium, incorporates rapeseed MEE (7-mole) in its laundry wash.

Had the chain length been a topic at the meeting of 27 August 2009? Parties heavily dissent on this aspect. Defendant notes that it is simply implausible that a chain length of seven had been discussed in that meeting, let alone that such a sample had been requested by Mr QUADE, given that subsequently only a sample with a chain length of ten had been provided by Kolb, without any further ado.

Defendant finally emphasized that it has not even been pleaded that on 27 August 2009 Mr QUADE had already made the invention. I understood from the pleadings that the judge-rapporteur’s expert opinion held that the missing pieces actually did still require a certain creative effort, i.e. the invention had not been made at the time, let alone communicated to the defendant.

Finally, defendant requested that the tariff for legal representation be exceeded by 50%, in view of the additional witness testimony via judicial assistance in Germany that had to be attended (2d), and two main hearings — which is not just a standard case anymore.

The second round of pleadings after the lunch break was pretty uneventful. Plaintiff‘s representative rebutted the request to exceed the tariff. On the contrary, judicial assistance had only been necessary because defendant had initated criminal investigations against Mr QUADE which prevented him from coming to Switzerland. In reply, defendant insisted that at least an initial suspicion was well founded.

The President indicated that a judgment can be expected within the next 6-8 weeks (more than three years after the complaint has been filed).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_001 | Hearing of 24 January 2022

Werner & Mertz
./.
Compad Consulting GmbH

Panel of Judges:

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

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ANNOUNCEMENT

PATENT APPLICATION IN SUIT

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

 

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


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Liability for damages when goods are withheld at the customs

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Case No. O2020_018 | Judgment of 4 January 2022 | ‘Customs assistance’

HEADNOTE

Art. 86k para. 2 PatA; Assistance provided by the customs administration, damages:

If no preliminary measures are ordered after goods have been withheld by customs, the applicant is liable for the damage caused by the withholding irrespective of whether the goods are patent-infringing.

We have reported about the main hearing in this matter on this Blog here. Now, the judgment is out. In a nutshell, plaintiff’s request for damages in the amount of about kCHF 38 was denied to about 95%; only CHF 1’800,– were awarded for legal assistance in the context of the seizure of a shipment at the customs. Interestingly, not even the costs for this item were awarded in full. First, the time spent (6 hours) was held to be excessive; only four hours were held reasonable:

Secondly, the hourly rate of CHF 550,– was reduced to CHF 450,–. Even though attorneys may well charge their clients more, the FPC holds that such costs cannot necessarily be imposed on a party liable for damages to full extent:

Requested items of the alleged damages that were not admitted are:

    • costs of refrigeration and deadfreight (for lack of substantiation; cf. ¶20);
    • costs for legal assistance relating to a test delivery (because that devlivery was not in the course of plaintiff’s normal business operations, i.e. voluntary; cf. ¶22 et seq.);
    • costs incurred for a protective letter (for lack of causation; cf. ¶24 et seq.);

The FPC also held that defendant’s course of action was apparently not vexatious; cf. ¶26 et seqq. and ¶33. Further, the FPC did not buy into the argument that customs assistance was not meant to be used for securing evidence of patent infringement, but rather (only) to stop piracy; cf. ¶28 et seqq.

All this appears pretty straight-forward to me. In my perception, the (really) interesting aspect of the decision is indeed the headnote. A Supreme Court judgment of more than twenty years ago (4C.164/2000, ¶3) in a trademark case might suggest that damages for withheld goods at the customs and when no PI has been granted can only be awarded when the preliminary question of infringement has been assessed. The FPC notes, however, that even though this might be a sensible approach in a trademark case, the same approach in patent matters would lead to a situation where the costs incurred for the assessment of (non)infringement would typically exceed the actual damages to be recovered, by far — contravening the gist of the framework defined by Art. 50 TRIPS.

Accordingly, the hn holds that liability for damages occasioned by withholding goods at the customs and when no PI is granted does not depend on whether or not the goods are actually infringing or not.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_018 | Judgment of 4 January 2022 | ‘Customs assistance’

Ypsomed AG
./.
Becton, Dickinson and Company

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Rudolf RENTSCH
    • Christoph MÜLLER

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch)
    • Maria ISKIC (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters

Representative(s) of Defendant:

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

JUDGMENT IN FULL

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Delica and JDE litigating over aluminum coffee capsules

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Case No. O2020_002 | Judgment of 21 December 2021

DISCLOSURE NOTICE: Hepp Wenger Ryffel was involved in this matter on behalf of Delica AG.
Delica logo

The plaintiff Delica had initiated nullity proceedings against Douwe Egbert’s CH 711 079 B1 on 2 June 2020; see Swissreg for bibliographic details.

CH 079 is part of a complex patent family. Corresponding to CH 079, the patent family comprises DE 20 2016 106 171 U1 (see the DPMA Register and file wrapper for further information), i.e. a utility model that was split off from a patent application (DE 10 2016 006 034 A1) which itself has meanwhile been been rejected in 2018 (cf. DPMA Register / file wrapper).

It is noted in ¶16 of the judgment that Douwe Egberts had initiated infringement proceedings 21 O 12764/19 in Munich, which are currently stayed in view of the cancellation proceedings; cf. order of 5 August 2020.

Coffee capsule

Claim 1 of CH 079 is pretty lengthy. In a nutshell, it’s about a coffee capsule with an aluminum capsule body and an aluminum cover, wherein the dispute was mainly about a specific arrangement of a sealing element in the flange of the capsule. Further independent claims pertain to a corresponding system and use of said capsule.

DE logo

About half of the judgment is dealing with the procedural history and a recitation of the various requests for maintenance of CH 079 in limited form; DE did not defend CH 079 as granted anymore. Yet further 12 pages of the judgment are spent on claim construction. The latter paved the way for a straight-forward assessment of patentability on the merits: The judgment holds that the subject-matter of all requests on file is anticipated by WO 2014 / 184 652 A1. Accordingly, CH 079 has been revoked and the further novelty attacks based on WO 2014 / 184 653 A1, WO 2014 / 198 474 A1, WO 2014 / 184 651 A1, EP 1 700 548 A1 and WO 2013 / 120 997 A1 did not need to be addressed.

The judgment is not yet final / can still be appealed to the Supreme Court.

UPDATE 28 July 2022: JDE’s appeal has been dismissed by the Supreme Court, with decision 4A_41/2022 of 24 May 2022.

/MW

BIBLIOGRAPHY

Case No. O2020_002 | Judgment of 21 December 2021

Delica AG
./.
Koninklijke Douwe Egberts B.V.

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • André WERNER
    • Kurt STOCKER

Judge-rapporteur:

    • André WERNER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Andrea MONDINI (TIMES)
    • Dr. Theodore CHOI (SBMP), assisting in patent matters
    • Christoph FRAEFEL (SBMP), assisting in patent matters

DECISION IN FULL

PATENT IN SUIT

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Infringement in Switzerland through globally accessible website

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Case No. O2019_007 | Decision of 19 November 2021 | ‘Gene sequencing’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the Defendant, Latvia MGI Tech SIA.
Illumina logo

Illumina Cambridge had sued Latvia MGI Tech for infringement of two patents, i.e. EP 1 530 578 B1 (cf. EPO Register and Swissreg) and EP 1 828 412 B2 (cf. EPO Register and Swissreg); ¶ 27.

In brief, the judgment holds that both patents are valid (EP 578: ¶ 33 et seqq; EP 412: ¶ 53 et seqq.) and infringed (EP 578: ¶ 84 et seqq; EP 412: ¶ 91 et seqq.).

MGI logo

Further, the globally accessible website en.mgitech.cn (and a brochure «presumably» (‘mutmasslich’) downloaded therefrom) is considered as sufficient evidence of infringement in Switzerland (offer of «[…] installation validation services, including all the reagents required for delivering such services»); ¶ 25-26.

The judgment can still be appealed to the Supreme Court.

UPDATE 28 July 2022: MGI’s appeal has been partially allowed by the Supreme Court with respect to the apportionment of costs, but otherwise dismissed on the merits. See this Blog here.

/MW

BIBLIOGRAPHY

Case No. O2019_007 | Decision of 19 November 2021 | ‘Gene sequencing’

Illumina Cambridge Limited
./.
Latvia MGI Tech SIA

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Michael KAUFMANN

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Andrea HEINIGER (Homburger)
    • Dr. Claudia BIBUS (Blum), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Thierry CALAME (Lenz & Staehelin)
    • Lara DORIGO (Lenz & Staehelin)
    • Dr. Martin WILMING (Hepp Wenger Ryffel), assisting in patent matters

JUDGMENT IN FULL

PATENTS IN SUIT

EP 1 530 578 B1:

EP 1 828 412 B2:

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Lanxess and Cabb fighting over a transport drum filled with thionyl chloride

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Case No. O2020_008 | Hearing of 24 November 2021

CABB logo

The plaintiff, Lanxess Deutschland GmbH, had sued CABB AG for infringement of the Swiss part of EP 2 468 653 B1, i.e. EP(CH) 2 468 653 H1.

EP 653 as initially granted pertained to a bunghole closure for closing a transport drum containing thionyl chloride (claim 1), a transport drum comprising a bunghole closure (claim 6), and a use of perhalogenated polymers for sealing a transport drum which at least partly contains thionyl chloride (claim 11).

Lanxess logo

The key feature of the patent pertains to a sealing which consists essentially of a perhalogenated polymer, in particular PTFE (more widely known as Teflon®) and/or PCTFE. According to EP 653, such sealings significantly reduce the corrosion of the transport drum which would occur if the thionyl chloride escaped and reacted with the humidity of ambient air.

The partial waiver published as EP(CH) 653 H1 was registered in accordance with a request filed by the proprietor in September 2019  — while, according to the avail­able online registers, the European patent was abandoned in all other countries. With the partial waiver, the independent claims directed to the bunghole closure and the use were deleted, and the remaining claim on the transport drum was limited, inter alia, to the feature that the drum is actually filled with thionyl chloride (and not only that it is suitable for this purpose).

Defendant did not dispute the infringement; only the question of validity of the patent remained. The defendant had relied on four public prior uses as closest prior art. One of the prior uses related to a drum containing a PTFE seal. However, the drum had been used for storing oxalyl chloride instead of thionyl chloride.

As became apparent in the course of the hearing, the expert opinion of the judge-rapporteur had been much in favor of defendant’s arguments.

Lonesome drum, corroded

Plaintiff argued that thionyl chloride is an exceptionally aggressive liquid requiring safety considerations going far beyond those for oxalyl chloride. This would be of utmost importance, in particular during transport of the drums when the sealing could be heavily and plastically deformed. Furthermore, plaintiff referred to a warning of Tri-Sure, a global leader in industrial closures and packaging components, according to which PTFE is not recommended for aggressive chemicals. In addition, the drums of the prior uses had not been suitable for storing thionyl chloride. Further, plaintiff questioned the public availability of the alleged prior uses.

In response, defendant argued that, on the basis of their inherent physical properties, the drums were actually suitable for storing thionyl chloride. Furthermore, plaintiff had not proven the alleged advantages re deformation behavior over previously known sealings. Moreover, the patent had not distinguished between thionyl chloride and less aggressive substances. Instead, it referred only generally to difficulties in storing corrosive liquids of which oxalyl chloride was just another example. The objective technical problem was therefore only to fill the drum with another corrosive liquid. Relating to the public availability, defendant offered two witnesses.

Close to the end of the hearing, some confusion arose as to where the seal was exactly located in some of the prior uses. Plaintiff’s statements in this respect appeared to surprise the judges. It was briefly discussed whether this issue had to be regarded as a novum (and would therefore not be admissible). However, plaintiff pointed to a passage in a written submission which allegedly contained this reasoning before closure of the file.

No settlement discussions took place. The President finally announced that a judgment could probably be expected in early 2022.

Reported by Stephan BALLIEL-ZAKOWICZ and Martin WILMING

BIBLIOGRAPHY

Case No. O2020_008 | Hearing of 24 November 2021

Lanxess Deutschland GmbH
./.
CABB AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Martin SPERRLE

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Klaus FEGER (Holzach)
    • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

As initially granted:

After the partial waiver:

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The ‘verbal limitation’ inter partes: What are the limits, actually?

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Case No. O2020_003 | Judgment of 17 September 2021

Hubert Hergeth had sued Uster Technologies AG and Maschinenfabrik Rieter AG for infringement of CH 698 484; see Swissreg for further bibliographic information. The plaintiff is at the helm of Hergeth GmbH.

Uster Jossi Vision Shield 2
Vision Shield 2

The attacked embodiments are Uster® Jossi Vision Shield T and Uster® Jossi Vision Shield 2.

The technology at stake in CH 484 is pretty simple, at least at the face of it: It’s about a device for ejecting and separating fibrous foreign particles (8) in a fibre transport air stream. The particles are blown into a funnel (5). At the exit of the funnel, another air stream takes over the ejected particles:

Page 3 of ch698484b1
Page 3 of ch698484b1
Contributed to DocumentCloud by Martin Wilming (Hepp Wenger Ryffel AG) • View document or read text

Please see this Blog here for a summary of the main hearing in this matter. The outcome is largely in line with the expert opinion of the judge-rapporteur; i.e. CH 484 is invalid (not in substance, but in view of some unallowable amendments) and not infringed.

Now, what is a ‘funnel’, finally?

The parties heavily dissented about what the term ‘funnel’ implies. In coming up with a claim construction, the judgment in ¶ 26 (fn 25) refers to the german orthography reference Duden in first place:

(intended for filling, pouring liquids or trickling substances into bottles or other containers with a narrow opening) Device of conical shape, which at its lower end merges into a narrow tube.

Funnel (Duden); anything but conical.

Okay, but what is ‘conical’ / a ‘cone’?

For the avoidance of doubt, I looked it up: It’s a geometry / geometric body that is formed by connecting all points of a closed and contiguous surface lying in a plane in a straight line with a point (apex) outside the plane (Wikipedia; emphasis added). This defintion is actually much broader than the definition in the judgment which appears to be recited from Duden, again. Confusingly, what is actually depicted in Duden is a funnel that is not conical in that strict sense (rather, the lines are curved). I feel that Duden is not a good reference for technical terms (apart from mere orthography, of course). The judgment does not refer to any other authority, though; but then simply holds that wider part of a funnel according to the patent doesn’t necessarily have to taper to an apex; «this is clear» (‘Es ist klar, …’).

Well, is it? It may be clear for those involved in the proceedings — but it’s not clear to me. In particular since the judgment holds later (in the discussion of infringement) that a funnel is defined by its form, not functionally:

Why should the apex (referred to as the ‘tip’ in the judgment) not matter for a funnel according to CH 484? Tapering to an apex makes perfectly sense to me for any funnel, be it with a straight or curved surface area of the wider part, and it would be supported by the only reference discussed in the judgment in this respect, i.e. Duden. I’m confused. But be that as it may; fortunately, it’s not decisive anyway.

A ‘further opening’: Claim construction / infringement

The features K2, i.e.

at the exit of [the funnel] is an opening (6) for a further air stream

and K3, i.e.

as well as a further opening for the removal of foreign particles with this air stream

turned out to be crucial. The judgment holds that the further opening cannot coincide with the outlet of the funnel; they rather must be separate openings (as depicted in Fig. 1 of CH 484); ¶ 27. On the other hand, the attacked embodiment does not make use of a further opening in that sense; the outlet of the funnel and the further opening for removal of the particles coincide:

Accordingly, the judgment holds that there is no literal infringement, and the complaint was dismissed for this reason; ¶ 91-92. Apparently, no arguments re infringement under the DoE with respect to feature K3 had been on file, which is why the FPC did not dive into this any further; ¶ 93.

Unallowable amendments

The patent application had been heavily amended during prosecution; see the file-wrapper below. It appears that Mr Hergeth essentially followed the IPI’s remarks and proposals. Still, the applicant is ultimately responsible for any amendment (patent professionals would surely have know this, but maybe not Mr Hergeth). A whole lot of features had been amended somewhat free-handed, and defendant argued that most of the amendments were actually unallowable.

In my perception, the FPC did not apply a very strict approach in the assessment of allowability of  the amendments — or, maybe, turned a blind eye to the amendments made / approved by an unlucky, un-represented applicant. Still, two amendment were found unallowable, i.e. i) an amended sentence in the description; and ii) dependent claim 2. The complaint was dismissed also for this reason.

I wonder: Couldn’t that have been fixed inter partes? A verbal limitation of the patent inter partes is meanwhile common practice — which typically means in practice that an independent claim is being limited (see e.g. O2019_012, ¶ 57 and fn 40). But what if the patentee had limited the patent inter partes by way of undoing an unallowable amendment in the specification, and/or deleting a dependent claim? The latter should be possible like in a partial waiver according to Art. 24(1) lit. a PatA (note the reference to Art. 55 PatA, i.e. dependent claims), in my view. But I cannot readily see why a patentee / plaintiff should be prevented from undoing an unallowable amendment inter partes, in principle. I feel that a strict analogy to Art. 24 PatA is not convincing. A patentee could fix unallowable amendments in response to a counter-claim for invalidity. So, why should a defendant be better off when he ‘only’ argues for nullity as a plea in defense?

I am eagerly awaiting a decision of the FPC where this is being dealt with.

The partial waiver

Before the complaint was filed, the patentee had partially waived CH 484. Specifically, dependent claims 3 and 4 were deleted, and the declaration foreseen according to Art. 97 PatD was rephrased in a way that results in Fig. 2 and 3 being deleted:

The judgment holds that the latter contravenes Art. 97 PatD and the Guidelines of the IPI:

However, that does not change the fact that the partial waiver had been registered, which has to be accepted as such for the present proceedings. A defective partial waiver would have to be challenged in administrative proceedings; ¶19, with reference to the ‘Sevelamer’ decisions:

Claims not forfeited

Defendant’s have argued that plaintiff had forfeited claims for alleged infringement, due to inaction for too long. In particular, WO 426 had been cited against plaintiff’s patent application in China, and plaintiff could and should have known about the allegedly infringing embodiment since then.

The judgment explicitly leaves the question unanswered whether the existence of a patent application should have given rise to the assumption that a respective device is actually commercialized. It is the perspective of the defendants that counts in the assessment of forfeit, and defendants did not argue that they had knowledge of the fact that WO 426 was cited against plaintiff’s patent application in China already back in 2010:

Correspoding proceedings elsewhere?

Plaintiff tried to introduce photographs into the proceedings at the FPC that had been taken a few weeks earlier in co-pending proceedings concerning the same attacked embodiment in Turkey.

No further information is available about proceedings in Turkey, for the time being.

The judgment has not been appealed / is final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_003 | Judgment of 17 September 2021

Hubert HERGETH
./.
(1) Uster Technologies AG
(2) Maschinenfabrik Rieter AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Kurt STOCKER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch Partner)
    • Dr. Alena BACH (Rentsch Partner), assisting in patent matters
    • Dr. Alfred KÖPF (Rentsch Partner), assisting in patent matters

Representative(s) of Defendant (1):

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Angelika MURER (Homburger)
    • Dr. Pavel PLISKA (inhouse), assisting in patent matters

Representative(s) of Defendant (2):

    • Lara DORIGO (Lenz & Staehelin)
    • Dr. Andreas WIRTH (inhouse), assisting in patent matters

JUDGMENT IN FULL

PATENT IN SUIT

Initially granted:

Partial waiver:

FILE WRAPPER

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Ypsomed and BD fighting over (abusive?) use of customs assistance

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Case No. O2020_018 | Hearing of 18 November 2021

BD logo

As indicated already in the public announcement of the hearing, defendant BD had requested assistance from the Swiss Federal Customs Administration, targeted against (a) certain product(s) of plaintiff Ypsomed. The customs administration subsequently indeed detained two shipments, i.e. one shipment of ‘SoloStar’ injection pens on July 30, 2020, and a shipment of components of ‘UnoPen‘ injection pens on August 5, 2020. Both shipments were released after a short period of time without the defendant filing a request for judicial seizure.

On a sidenote: It is not that BD did not do anything. BD had already lodged infringement proceedings against Ypsomed on 10 January 2020. The FPC has dismissed the complaint with decision of 9 June 2021; see this Blog here. An appeal is currently pending at the Supreme Court.

Ypsomed logo

Ypsomed now claims that the customs assistance measures were applied for improperly / abusive, and claims compensation for the damage it allegedly suffered as a result of the detention.

BD denies that the conditions for a claim for damages are met; moreover, Plaintiff has not been able to prove any financial damage in any event.

At the main hearing, Ypsomed painted a bigger picture and argued that customs assistance was not meant to be used for securing evidence of patent infringement, but rather (only) to stop piracy — which was not at stake here. Ypsomed was obviously fearing that its frequent exports of injector pens of various kind was in danger, at a larger scale. Further, Ypsomed complained that it had not been given sufficient access to the files of the proceedings at the customs. Only a redacted version of BD’s request was provided, but the actual request explicitly referred to features described in a fully redacted chapter. I understand that proceedings are co-pending before the Federal Administrative Court in this respect.

BD softpedalled the matter, essentially arguing that it simply used customs assistance, in full compliance with the law. As a matter of fact, customs assistance measures could be in place against anyone at any time, without knowledge thereof. That’s the whole point of the provision. BD argued that the present case actually shows that the system works smoothly. Both deliveries were released very quickly. The first one with ‘SoloStar’ injector pens could have been released even more quickly if Ypsomed’s counsel would only have provided a little more information over the phone when BD’s counsel asked for technical details of the retained ‘SoloStar’ pens.

Now, what’s the point of customs assistance when main proceedings are already pending and the allegedly infringing embodiment is available on the market, or plaintiff obviously has knowledge of the detailed mechanics of the allegedly infringing embodiment otherwise? At one point, Ypsomed referred to a correspondence between BD’s counsel and the customs administration, indicating that BD was seeking to clarify

[…] in which form or with which components Ypsomed exports the UnoPens from Switzerland.

Now, that makes sense! I understand that Ypsomed had argued in O2020_001 that BD’s patent required a cartridge with the medicament as part of the injector pen; see ¶ 27 of the FPC’s judgment in O2020_001. Accordingly, I assume that BD wanted to find out whether or not Ypsomed actually delivered ‘UnoPens’ with or without such cartridges. The timing fits well: The shipments were detained after Ypsomed’s answer and only after the instruction hearing, but (likely) before BD’s reply in O2020_001.

The parties did not enter into settlement discussions on the spot. The President indicated that a judgment (or an order on taking evidence) can only be expected in 2022, in view of the current workload.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_018 | Hearing of 18 November 2021

Ypsomed AG
./.
Becton, Dickinson and Company

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Rudolf RENTSCH

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)

ANNOUNCEMENT

SOME LIVE NOTES FROM THE HEARING

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Re-shuffling of claims: Scramble gamble

Reading time: 8 minutes

Case No. O2019_012 | Decision of 30 August 2021 | ‘Sägeblätter’

HEADNOTE

Art. 58(1) CPC, Art. 28a PatA; Principle of non ultra petita; limitation of patent claims.

The limitation of patent claims declared for the proceedings («verbal» or «inter partes») has retroactive effect to the date of grant of the patent («ex tunc»).

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

For some background information about the subject-matter at stake, please have a look at the comments concerning earlier summary proceedings between the same parties on this Blog here.

The patent in suit
Bosch’s logo

In brief, the invention is about a tool for use with a hand guided machine with an oscillating drive. The attachment device for the tool is a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools
The alleged infringement
Coram’s logo

The plaintiffs asserted that EP 362 (more precisely, verbally limited by a combination of claim 1 with dependent claims 13, 8, 3, 7 and 4, further limited by some  prefererred features in these claims) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’:

Grab and rotate the tool, to get an idea of
the 3D-fitting


In prior summary proceedings, interim injunctive relief had been denied for lack of novelty over EP 596 831 A1. At that time, the patent in suit had not yet been verbally limited as in the present proceedings; see this Blog here. But now, the judgment holds that the verbally (very) limited claim is valid and infringed.

The most interesting aspects of the judgment, in my view, are the following:

An unintentional mishap: Correction allowed

Plaintiffs had limited EP 362 inter partes with the reply, inter alia by combining claim 1 with features of claim 13. The relevant feature of claim 13 reads as follows (emphasis added):

[…] the attachment device (12) comprises an even number of driving area regions (2, 2a, 2b), preferably 4 or more, preferably 8 or more, and particularly preferably 16 or more, and further preferably 64 or less, preferably 48 or less, and particularly preferably 32 or less, most preferably 24,

Based thereon, the verbally limited claim demanded for «4 or more and 32 or less» driving area regions. Which is okay. But the mandatory feature of an «even number» got lost. The judgment holds that an interpretation of Plaintiffs’ submission in good faith must lead to the conclusion that the «even number» was not meant to be deleted. In particular, Plaintiffs had submitted in the reply that they limited the claim by defining the exact numbers instead of «only» the even number:

Accordingly, Plaintiffs’ correction to re-include the «even number» even after closure of the file was admitted.

What is a ‘Rounding’?

The claim as asserted demands for ’roundings’ (Abrundungen) between the driving area regions. Apparently, the parties dissented about whether or not that implied a certain threshold of the radius. Accordingly, the FPC had to construe the term. Towards this end, the judgment first points to the common use of the term in material processing, i.e. to chamfer an edge (eine Kante brechen), with reference to Wiktionary (fn 19 in ¶ 19). However, this does not say anything about the extent of chamfering. And the patent itself? It is silent about the effect of the roundings, which is why the judgment holds that a functional interpretation does not help either. Since the patent does not give any further indication about the extent of the rounding, the judgment holds that the term is essentially non-limiting, both in terms of validity and infringement:

Accordingly, the judgment holds that ’roundings’ has to be interpreted broadly: Depending on the viewing scale, any edge that has been manufactured with conventional manufacturing techniques has a certain rounding.

Can it really be as simple as that (even though it was not a decisive issue of the case)? I do agree that the term has to be interpreted broadly. And I can’t know what had been pleaded, but the purpose of a rounding is pretty clear to me, i.e. to protect against injury and to facilitate insertion into other workpieces (see Wikipedia) — which makes perfectly sense to me in the context at hand. In my view, geometries that are not ‘fit for these purposes’ are not ’roundings’ according to the patent.

Does scrambling of claims have any limits?

The verbally limited claim essentially is a combination of claims 24 + 23 + 15 + 14 + 13 + 12 + 10 + 9 + 6 + 5 + 4 + 1 of the application as filed, or claims 13 + 8 + 7 + 4 + 3 + 1 of the patent as granted. On top of that, eight features in those claims were amended e.g. by way of making optional features mandatory, deleting alternatives, etc.

Defendant had argued that the resulting combination of features was not originally disclosed, i.e. that the amendment was unallowable. The court did not buy into that. Rather, the judgment holds that the resulting subject-matter was necessarily (‘notwendigerweise’) originally disclosed — in my reading, simply because it was in the claims, and even though many choices were made; ¶ 26.

That actually sometimes suprises me: A combination of (even many) claims and scrambling of features within the combined claims is hardly ever challenged in terms of allowability under Art. 123(2) EPC. But why is that? Is such a limitation really so different from the choices from multiple lists, which is only possible to very limited extent according to EPO practice? In the end, it’s all about clear and unambiguous disclosure in the application as filed. Does it make a difference whether the disclosure is in the claims as filed, or in the specification? What if the disclosure would not have been in the claims, but in ‘claim-like clauses’ of same content at the end of the specification; would that have made a difference?

Food for thought: To prevent trouble with the (very) strict approach of the EPO re allowability of amendments under Art. 123(2) EPC, let’s assume a Euro-PCT application based on a PCT application with literally all conceivable permutations covered in thousands of claims, with multiple dependencies. Such PCT applications are definitely out there already. Note that there are no claim fees for PCT applications, and the ‘application as filed’ in the regional phase at the EPO is the PCT application as filed (Guidelines B-VIII, 6). Happy life!(?).

Ex tunc effect of the verbal limitation

This is what the hn is all about. A patentee can partially waive the patent (Art. 24 PatA) with erga omnes effect, or he can verbally limit the patent with inter partes effect in civil proceedings. The judgment holds that the patentee’s right to invoke the patent to a limited extent is based on the principle of party disposition (‘Dispositionsmaxime’); ¶ 58.

However, what is the timely effect of a verbal limitation? The judgment holds that in the absence of an explicit legal basis, the court has to decide in accordance with the rule that it would make as a legislator; Art. 1(2) CC. In the court’s view, it suggests itself to assume the same ex tunc effect for a verbal limitation as is codified for a partial waiver; Art. 28a PatA.

Recall of products from commercial customers

The judgment provides some clarification about how a recall of infringing products from commercial customers is to be dealt with. The judgment holds that the recall shall be accompanied with a mentioning of the patent infringement. However, it is not necessary to offer a refund of the purchase price. The latter would amount to a disproportionate encroachment on the private autonomy of contractual relationships.

Reported by Martin WILMING

Coram’s appeal has been dismissed.

BIBLIOGRAPHY

Case No. O2019_012 | Decision of 30 August 2021 | ‘Sägeblätter’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Markus A. MÜLLER
    • Dr. Stefan KOHLER
    • Dr. Philipp RÜFENACHT
    • Dr. Daniel ALDER

Judge-rapporteur:

    • Dr. Markus A. MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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Does the Supreme Court assess the skilled person’s understanding of a piece of prior art?

Reading time: 6 minutes

Case No. 4A_149/2021 (Supreme Court) | Judgment of 24 June 2021 on appeal against O2018_008 (Patent Court) | Judgment of 2 February 2021 to revoke EP(CH) 1 379 220 H1

Tiotropium bromide

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

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

Claim 1 after waiver

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

Claim 3 after waiver

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

We have reported about the FPC’s decision on this Blog here. In a nutshell, the FPC had held that the subject-matter of claim 1 (gelatine with PEG as capsule material) was obvious over Maessen et al. in further view of JP 502 (JP 2000-143502, available as machine translation). Essentially the same reasoning applied to the subject-matter of claim 3 (HPMC as capsule material; the FPC had held that claim 3 was obvious over Maessen et al. and Ogura et al. (or vice versa).

And the Supreme court?

Only the finding of obviousness of claim 3 (HPMC capsule material) was challenged by BI in the appeal proceedings. BI’s arguments essenitally hinged on the formulation of the ‘objective technical problem’ in the problem-solution approach of the FPC; ¶ 5. The FPC had held that it was only the provision of an alternative (which in by far the most cases results in a finding of obviousness), while BI argued that it should be an improvement over the prior art; ¶ 5.1 (i.e. the improved physical stability of the encapsulated active agent, and thereby improved inhalability.)

The Supreme Court did not buy into that and held (with reference to the case law of the Boards of Appeal of the EPO) that a specific technical effect can only be considered in the formulation of the ‘objective technical problem’ (and supported by subsequent experimental evidence) when it is at least foreshadowed in the application as filed:

See Case Law of the Boards of Appeal, I.D.4.2.2 for further information; in particular, see e.g. T 321/16, ¶ 1.3.1, in German («[…] wenn diese Wirkung in den ursprünglich eingereichten Unterlagen nicht wenigstens angedeutet wird.»), with reference to T 344/89, ¶ 5.3.1, in English language («[…] if the new problem were foreshadowed in the originally filed application.»).

The Supreme Court noted that BI failed to establish in first instance proceedings that there was any effect foreshadowed in the application as filed that would go beyond the provision of a mere alternative to gelatine, as exemplified e.g. by Maessen et al.

Stepping back, I feel that this is not out of the ordinary. The patent as granted outlines the invention as to provide a capsule material with a reduced moisture content of less than 15% (¶ [0008] and claim 1), and mentions as the (subjective) technical problem to achieve a sufficient stability of the active agent (¶ [0006]). Notably, irrespective of the actual capsule material — and even though some preferred upper limits below 15% are mentioned, the patent is silent about why they are preferred. What is more, both gelatine and HPMC are actually described exchangeably in the specification; no indication whatsoever that there was any advantage of HPMC over gelatine. (The outcome might well have been different if the patent had indicated any preference of HPMC over gelatine, maybe.)

Further, the FPC had held that Voigt/Fahr was sufficient evidence of the skilled person’s knowledge that a more dry capsule material was preferred; and that Zeng et al. had been appropriately considered by the FPC (even though not expressly mentioned again in the context of claim 3, but rather only in the assessment of claim 1).

Does the Supreme Court assess the skilled person’s understanding of prior art documents?

There is one paragraph in the Supreme Court’s judgment that might suggest otherwise:

The Supreme Court held, losely translated, that it assesses violations of Federal Law, and that it does not assess the skilled person’s technical understanding of prior art documents. This paragraph already gave rise to a critical comment on Kluwer Patent Blog and Lexology.

I don’t see much of an issue here. In my reading in context, it appears that the Appellant had argued in appeal proceedings that Ogura et al. only pertained to the moisture content of empty capsules. The Supreme Court refers to this argument as an interpretation which had not been at stake in the underlying decision of the FPC — and which Respondent disputed.

With this in mind, I feel what the Supreme Court meant to say when it later again refered to an interpretation of a prior art document is that it does not assess the skilled person’s technical understanding of such a document from scratch again on appeal, when a new interpretation is brought forward only in the appeal stage. But there may well be situations where the FPC’s finding of the skilled person’s understanding of a certain piece of prior art could be reviewed by the Supreme Court, e.g. when the finding is just arbitrary.

BI’s appeal was dismissed; EP(CH) 1 379 220 H1 is finally revoked.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_149/2021 (Supreme Court) | Judgment of 24 June 2021 on appeal against O2018_008 (Patent Court) | Judgment of 2 February 2021 to revoke EP(CH) 1 379 220 H1

Glenmark Pharmaceuticals Europe Ltd
(Appellant / Defendant)
./.
Boehringer Ingelheim Pharma GmbH & Co. KG
(Respondent / Plaintiff)

Panel of Judges:

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

Court Clerk:

    • Dr. Matthias LEEMANN

Representative(s) of Appellant / Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)

Representative(s) of Respondent / Plaintiff:

SUPREME COURT DECISION

PATENT COURT DECISION

PATENT IN SUIT

EP 1 379 220 B1 (as granted):

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

Claims after partial waiver, mark-up:

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Please welcome with me: The mind willing to understand, not desirous of misunderstanding

Reading time: 7 minutes

Case No. O2020_001 | Decision of 9 June 2021

BD logo

As mentioned earlier on this Blog here and here, Becton, Dickinson and Company had sued Ypsomed AG for infringement of EP 2 825 227 B1; see EPO Register and Swissreg for further bibliographic information.

The attacked embodiment is Ypsomed’s UnoPen™:

Ypsomed logo

The FPC’s judgment has meanwhile been published. Cutting a long story short: The FPC had to take a decision only on the unallowability of various amendments of EP 227, and dismissed BD’s complaint on this basis alone.

However, the most interesting aspect of the decision is claim construction. Accordingly, this is also mentioned in the FPC’s tweet:

Claim construction in good faith

With reference to an old Supreme Court decision, 107 II 366 (¶ 2), the jugdment holds that claims are to be construed in good faith; ¶ 24. This is what had been held in 107 II 366:

More recent judgments of the Supreme Court (in German language) did not explicitly refer to the good faith approch anymore, but rather only recited the sentence pertaining to the consequences of wrong, incomplete or contradictory definitions — which are to be borne by the patentee. However, this is apparently merely a shortened citation rather than a change of practice of the Supreme Court; a recent judgment in French language still refers to the good faith approach:

Now, what does ‘good faith’ mean when it comes to claim construction?

[drum roll]

You guessed it, didn’t you? Indeed, it’s the ‘mind willing to understand, not desirous of misunderstanding’ approach of T 190/99 to which the FPC now explicitly refers in ¶ 24 (fn 9):

T 190/99 is one of the most cited EPO decisions of all times. Sooner or later in any complex case at the EPO, the catchy headnote is cited by at least one party. Mostly, by the more desparate one.

The most interesting feature in terms of claim construction is feature 1.4.2:

According to the wording of the claim (emphasis added), the pen is configured such as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

The parties fundamentally disagreed how this is to be understood. The defendant held that the claim wording is clear by and in itself; no claim construction even needed. On the other hand, the plaintiff argued that this should be understood as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

in light of the specification — which is pretty much the opposite of the wording.

First, the judgment holds that feature 1.4.2 in isolation is indeed perfectly clear. However, the claim as a whole throws doubt on the linguistic interpretation of feature 1.4.2. In light of feature 1.4.3, this would mean that not only during an injection position, but also already during dose setting and dose correction a medicament would be ejected. This can’t be it; the claim as a whole would not amount to a credible technical teaching in such a reading.

Accordingly, in light of the specification, the skilled person would indeed understand feature 1.4.2 according to plaintiff’s interpretation, i.e. contrary to the mere linguistic interpretation.

Defendant further argued that one might well assume how a device with a literally interpreted feature 1.4.2 might work, e.g. with an additional (de)coupling arrangement. The FPC did not buy into that. In essence, this would mean to assume an additional feature to compensate for exactly the effect which is literally recited in the claim — which is counter-intuitive.

Finally, the judgment clarifies that this claim construction does not amount to a reduction of the scope of a claim to the disclosed embodiment(s). Rather, the claim as a whole does not provide a credible technical teaching (‘glaubhafte technische Lehre’) at all, and thus calls for proper construction in light of the specification. The proper construction of feature 1.4.2 is not narrower or broader than the literal interpretation; it is simply different.

Unallowable amendments

Allowability of amendments is always very case-specific and rarely of broader interest. This case is not an exception to the rule. However, I stumbled upon one of the various amendments that were held unallowable, i.e. the following feature (emphasis added; ¶ 49 et seq.):

[D]uring dose setting and dose correcting, stopping surfaces of said external teeth of said driver engage stopping surfaces of teeth of ratchet member to substantially prevent said driver from rotating with respect to said dose set knob.

The issue was whether there was disclosure in the application as filed for said engagement not only during dose setting, but also during dose correcting. Plaintiff argued that the feature would only mean, when properly construed in light of the specification, that during both dose setting and dose correcting the relative positions of the teeth of the driver and the teeth of the ratchet member are maintained.

The judgment holds that this is not the right approach: Allowability of amendments is all about clear and unambiguous disclosure in the application as filed, not about whether the skilled person could correctly construe or understand the feature.

On a quick read, this might be confusing. Claim construction surely matters; it has to go hand in hand with the check for proper disclosure in the application as filed; cf. e.g. Case Law of the Boards of Appeal, II.E.1.3.9. Else, the test for allowability of amendments would effectively only amount to a check for verbatim disclosure in the application as filed.

With respect to the specific feature recited above, the judgment holds that engagement of the stopping surfaces (if that may occur at all) in the correcting direction just cannot be such ‘as to substantially prevent said driver from rotating with respect to said dose set knob’:

Dies können die Stoppflächen bei einer Drehung in der entgegengesetzten Richtung als der bei der Dosiseinstellung auf keinen Fall; […]

The issue here was actually a classic non-disclosed feature: the engagement of the stopping surfaces as disclosed could not have the claimed effect; other configurations (which were not disclosed) could well have that effect, e.g. with rectangular teeth. Unlike the claim construction issue above where the claim as a whole did not make technically sense when taken literally. Accordingly, the amendment was unallowable. And, with a mind willing to understand, the judgment does not deny that claim construction matters when checking for allowability of amendments.

Expenses

The judgment is a good reminder that expenses for assisting patent attorneys have to be substantiated. Expenses of more than kEUR 30 for involvement of a patent attorney on two days is not credible from the outset.

BD’s appeal has been dismissed by the Supreme Court with decision 4A_500/2021 of 31 January 2022 (published 9 March 2022).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_001 | Decision of 9 June 2021

Becton, Dickinson and Company
./.
Ypsomed AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Lorenzo PARRINI

Judge-rapporteur:

    • Christoph MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

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

Representative(s) of Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
    • Dr. Axel REMDE (Rentsch), assisting in patent matters
    • Markus FRANTZ (SSM), assisting in patent matters

FPC DECISION

PATENT IN SUIT

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What the heck is a funnel?!

Reading time: 4 minutes

Case No. O2020_003 | Hearing of 7 July 2021

Hubert Hergeth has sued Uster Technologies AG and Maschinenfabrik Rieter AG for infringement of CH 698 484; see Swissreg for further bibliographic information. The plaintiff is at the helm of Hergeth GmbH.

Uster Jossi Vision Shield 2
Vision Shield 2

The attacked embodiments are Uster® Jossi Vision Shield T and Uster® Jossi Vision Shield 2.

The technology at stake in CH 484 is pretty simple, at least at the face of it: It’s about a device for ejecting and separating fibrous foreign particles (8) in a fibre transport air stream. The particles are blown into a funnel (5). At the exit of the funnel, another air stream takes over the ejected particles:

Page 3 of ch698484b1
Page 3 of ch698484b1
Contributed to DocumentCloud by Martin Wilming (Hepp Wenger Ryffel AG) • View document or read text

The first part of plaintiff’s pleadings was done by Mr Hergeth, the inventor and patentee himself. His presentation was frequently interrupted by the President, enquiring where the specific facts and arguments have been made beforehand in the written exchange of briefs. In my perception, the frequent interventions and the subsequent attempts to clarify these issues sometimes derailed the presentation. Accordingly, Mr Hergeth’s presentation may well have taken (much) longer than expected: When Mr Hergeth had finished his presentation, plaintiff’s representatives were politely reminded by the President that they would still have about five minutes for their remaining pleadings. Note that the parties are held to limit their first pleadings to about an hour (it took a little longer in the end, which however has not been an issue).

I understood from the pleadings that the expert opinion of the judge-rapporteur had held that the patent was not infringed, and that it had been unduly amended during prosecution.

With respect to the unallowable amendments, the plaintiff blamed the examiner for having tampered with the patent application merely for clarity reasons:

Der Umstand, dass der Schweizer Prüfer beim IGE dem Erfinder aus Gründen der Klarheit in seine Anmeldung hinein pfuschte, […].

Regarding non-infringement, it appears that inter alia the term «funnel» (‘Trichter’ in German) is controversial, and the parties did not agree on the correct claim construction. Note that the patent is maybe the shortest that I have ever seen being litigated: The specification and the claims fit on a single page. So, the patent itself is maybe not of much help in this respect. What is more, the defendants pointed out in their pleadings that the plaintiff himself got lost in the various proposed interpretations of the term «funnel»:

Die Klägerin selbst ist orientierungslos.

Defendants showcased this argument by way of comparative citations from plaintiff’s briefs. In reply, plaintiff denounced defendants’ compilation as misleading. In my perception, the atmosphere between the parties was exceptionally embittered. Maybe we will learn more about the reasons for this and the background of the matter from the final decision. I could not stay until the very end of the hearing, but I have no reason to assume that the parties have settled.

On the procedural side, it was interesting to see that the defendants had prepared a joint pleading on an unbranded slide deck, which obviously made time management at the hearing a lot easier for the court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_003 | Hearing of 7 July 2021

Hubert HERGETH
./.
(1) Uster Technologies AG
(2) Maschinenfabrik Rieter AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Kurt STOCKER

Judge-rapporteur:

    • n/a

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch Partner)
    • Dr. Alena BACH (Rentsch Partner), assisting in patent matters
    • Dr. Alfred KÖPF (Rentsch Partner), assisting in patent matters

Representative(s) of Defendant (1):

    • Dr. Andri HESS (Homburger)
    • Angelika MURER (Homburger)
    • Dr. Pavel PLISKA (inhouse), assisting in patent matters

Representative(s) of Defendant (2):

    • Lara DORIGO (Lenz & Staehelin)
    • Dr. Andreas WIRTH (inhouse), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

Initially granted:

Partial waiver:

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A hard-to-digest ‘Gugelhupf’

Reading time: 6 minutes

Case No. O2019_012 | Hearing of 1 July 2021

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

For some background information about the subject-matter at stake, please have a look at the comments concerning earlier summary proceedings between the same parties on this Blog here.

The patent in suit
Bosch’s logo

In brief, the invention is about a tool which is intended to be used with a machine, in particular a hand guided machine. The machine has a rotational drive, e.g. an oscillating drive.

In simple terms, it’s all about a somewhat special attachment device that transfers a torque from the driving device to the machine tool. It’s a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools
The alleged infringement
Coram’s logo

The plaintiffs assert that EP 362 (more precisely, the combination of independent claim 1 with dependent claims 13, 8, 3, 7 and 4) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’:

Grab and rotate the tool, to get an idea of
how ‘gugelhupfig’ the attachment device is …

A mishap

I understood from the pleadings that a mishap might have occured when the plaintiffs ‘limited’ EP 362 inter partes with the reply, i.e. when inter alia claim 13 was combined with claim 1. The relevant feature of claim 13 reads as follows (emphasis added):

[…] the attachment device (12) comprises an even number of driving area regions (2, 2a, 2b), preferably 4 or more, preferably 8 or more, and particularly preferably 16 or more, and further preferably 64 or less, preferably 48 or less, and particularly preferably 32 or less, most preferably 24,

It appears that claim 1 as limited inter partes now specifies that the attachment device comprises 4 or more and 32 or less driving area regions — but the feature of ‘an even number of driving regions’ got lost. Or has it been intentionally omitted? This is where the parties dissent. Plaintiffs argued that it cannot have been intended to delete the ‘even number’ when interpreting the request in good faith. In particular, the deletion was obviously irrelevant for validity and infringement. On the contrary, defendant argued that the deletion itself had been made intentionally (in mark-up and recited in the reply, maybe to block work-arounds with an odd number of driving area regions), but plaintiffs simply do not want to bear the consequences:

Möglicherweise wollten die Klägerinnen die Konsequenzen der Streichung nicht; aber die Streichung an sich haben sie gewollt.

allegedly unallowable amendments

Some further amendments were discussed re allowability. I will not discuss them all here, but I found one discussion concerning ranges particularly interesting. I understood from the pleadings that plaintiffs have formed ranges from the separate lists of upper and lower limits given in the claims (most likely former dependent claims 4 and/or 7). The case law of the EPO’s Boards of Appeal typically allows for some re-shuffling of limits from interrelated ranges. But this is not necessarily the case when there are only separate lists of lower limits and upper limits; see e.g. T 1919/11 (r. 2.2.2) where a combination of lower and upper limits from separate lists in two consecutive sentences of the specification was held unallowable.

The President asked the defendant whether they would have expected to infringe the respective claim when they exceeded the lowest value from the first list; defendant answered in the affirmative. Likewise, the President asked whether they would have expected to infringe that claim when they stayed below the highest value from the other list; again, defendant answered in the affirmative.

I am not sure where the President’s intervention was heading to. Does it make a difference if such a disclosure is not in the specification (as in T 1919/11) but rather in the claims? I don’t think it should. Allowability of amendments is all about clear and unambiguous disclosure of a (combination of) feature(s) in the application as filed — no matter, where. (Okay, leaving the abstract aside.) Scope of the claims as filed cannot matter. If it did matter, one could also narrow down an initially claimed genus (e.g. metal) to an initially undisclosed species (e.g. copper): Of course one would have expected to infringe a ‘metal claim’ when using copper. But one would not have expected that copper could specifically be claimed out of the blue, and that one would eventually need to invalidate a claim directed to copper.

Oral proceedings in co-pending opposition proceedings are scheduled for 12 October 2021. The claims currently on file with the EPO were held to be not allowable in the preliminary opinion of the OD. But I understand that these claims are not (yet) the ones that are on file in proceedings at the FPC; the final date for submissions in EPO proceedings is 12 August 2021.

At the end of the hearing, the President mentioned that a decision can be expected only after judicial vacations (i.e. after 15 August 2021) but very likely before 12 October 2021.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_012 | Hearing of 1 July 2021

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Markus A. MÜLLER
    • Dr. Stefan KOHLER
    • Dr. Philipp RÜFENACHT
    • Dr. Daniel ALDER

Judge-rapporteur:

    • Dr. Markus A. MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Andri HESS (Homburger)
    • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters
    • Dr. Niklaus KRÄNZLIN (Gachnang), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

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