[t]he lawsuits concerned 3M’s patented technology relating to precision shaped abrasive grain. Terms of the settlement are confidential.
Logo sia
3M’s technology is referred to as Cubitron™ II in the press release.
The related opposition proceedings apparently concerned EP 2 373 755 B1; see the European Patent Register and Swissreg. The FPC had requested with letter of 9 November 2018 that the EPO’s opposition proceedings be expedited. The parties to the proceedings at the FPC were represented by Dr. Michael RITSCHER (MLL) and Dr. Christian HILTI (Rentsch), respectively.
Bosch has withdrawn the opposition on 29 October 2019, and the opposition proceedings have been discontinued with decision of 5 February 2020.
I had the pleasure to attend the conference on Case Management Issues in IP Proceedings earlier this week in St. Gallen, jointly organized by INGRES and SVRH. Expectedly, the discussion between judges, legal practitioners and patent attorneys was vibrant and open-minded. I gained a lot of full and frank insight into how cases are handled before the various commercial courts in Switzerland; these aspects of the conference will surely be dealt with in a summary to be made available here.
My personal take-away messages concerning proceedings before the FPC are the following:
No split reply anymore …
In the normal course of infringement proceedings, the FPC had ordered a partial reply from the plaintiff that only dealt with the nullity arguments brought forward by the defendant in his answer to the complaint, as a plea in defense. The FPC’s intention was to have a single statement of both parties on the two key aspects of the case, i.e. infringement and validity, before the parties were summoned for the instruction hearing. In the informal part of the instruction hearing, the court delegation could thus indicate a preliminary opinion on both key aspects, in view of the first exchange of arguments. Things may well have changed in view of the second exchange of briefs. But still, the interim assessment of the matter in the instruction hearing had been based on a well-balanced exchange of arguments: The first round had been completed. The exchange of briefs had been as follows:
Old practice w split reply
In view of the obiter dictum in the Supreme Court’s recent decision 4A_70/2019 (discussed on this Blog here), the FPC has meanwhile discontinued the practice to split the reply in infrigement proceedings. Thus, the regular exchange of briefs in infringement cases will be as follows:
New practice w/o split reply
The reply will not be split anymore. The plaintiff will be invited to file his reply only after the instruction hearing. That’s a pretty standard exchange of briefs now, as it is known in any kind of proceedings governed by the CPC.
… and how that might influence the procedural strategy of the parties
Clearly, the assessment of validity of the patent in suit by the court delegation during the instruction hearing will be even more preliminary than ever before. The plaintiff will likely not have anticipated and addressed all the nullity arguments in the complaint. Thus, there will likely be nullity arguments on file on which the plaintiff / patentee has not yet been heard, and the court delegation cannot easily give an opinion on such arguments (except, maybe, for some formal / purely legal issues). Time will tell whether the instruction hearing will henceforth be of that much value to foster a settlement as it had been in the past; see the settlement rates over the years on this Blog here.
Some food for further thought, based on what has been discussed at the conference:
Will we see more infringement complaints with a full and frank discussion of potential nullity arguments, based on what has been argued in proceedings elsewhere, or in prior communication between the parties? That is pretty likely, indeed. It became clear in the discussion that such extensive frontloading has already happened.
A defendant in an infringement case has any motiviation to get invalidity reasonably addressed by the court delegation in the instruction hearing. But that will not happen to large extent when the plaintiff had just been silent on validity in his complaint. Still, the defendant might cure this ‘defect’ himself: He could gather what had been argued elsewhere by the patentee / plaintiff in defense of his patent or during prosecution, and disprove those arguments. The plaintiff would be hard pressed to contradict his own arguments that had been made elsewhere — and the court delegation could well indicate an opinion on such arguments in the instruction hearing, in my opinion.
Will patents more often be asserted only to a limited extent in the future, i.e. limited enough to render the (expected) plea for nullity in defense moot, yet broad enough to cover the allegedly infringing embodiment? In my perception, that would not be a sign of weakness at all. It is just pragmatic to assert the patent only to the extent necessary.
Yet another strategy of patentees might be to frontload various limited versions of the patent for assertion inter partes (verbal limitations) as auxiliary requests already with the complaint, to get a broad(er) picture of potential allowability in the instruction hearing.
Finally, patentees might also consider to assert the patent as granted, but to set out in the reasons that a whole lot of further features of the patent, from dependent claims or even from the specification, are fulfilled in the allegedly infringing embodiment. That leaves much leeway for various verbal limitations at a later stage of the proceedings.
Plan B?
Now, what if the instruction hearing turns out to be not of much value under the new regime anymore? Dieter BRÄNDLE mentioned that the Commercial Court Zurich had invited the parties to submit a brief statement only for consideration in the instruction hearing. If no settlement was reached and the parties wanted to rely on anything from their statements, they had to refile those arguments with their outstanding briefs.
Could that maybe a worthwile approach to bring the patentee’s complete view on defendant’s plea for nullity to the court delegation’s attention before the instruction hearing? Initial reactions were split: Would such a statement maybe considered as a reply in disguise? That could have fatal consequences with respect to an early closure of the file. However, I have also heard prominent voices in favor of this approach. Mark SCHWEIZER indicated that nothing like this would now be introduced in a rush now. Let’s see how the new regime works in practice. If it doesn’t, one might well consider this in more detail.
On a sidenote, I have recently been involved in a settlement conference in U.S. proceedings. The judge did a great job, even though no settlement could be reached in the end. The judge issued a very specific order beforehand about a confidential memorandum to be filed by both parties; see the Order for Settlement Conference. Along with a strict word count limit, I feel this is indeed very helpful for a judge to better understand where both parties are coming from. I am not overly enthusiastic about litigation in the U.S. at all, but this could be sth worth to consider.
Settlement talks in general
Should court-mediated settlement talks be held only with the two parties together? What about shuttle diplomacy, i.e. the judge(s) also talking with each party individually, e.g. to overcome certain personal tensions or hostile feelings between the parties and/or their representatives. Shuttle diplomacy (referred to as ‘Einzelabreibung’ or ‘Einzelabschlachtung’ by some participants) is practised at least by some Swiss courts; see Mark SCHWEIZER’s recent comparative study.
One potential downside is, of course, that a party may easily feel uncomfortable with the fact that some unilateral conversation is going on behind the scene between the judge(s) and the counterparty.
Mark SCHWEIZER had been asked whether shuttle diplomacy is done at the FPC. The answer was a clear ‘No’, and it became pretty clear that this was not an option for him at all.
Further news from the FPC
What¨s up?
The FPC has recently issued ex parte interim measures without any written statement of the grounds, in accordance with Art 239(1) lit. a CPC. A written statement of the grounds must be provided if one of the parties so requests within 10 days of the notice being given of the decision; else, the parties are deemed to have waived their right to challenge the decision (Art 239(2) CPC). Since ex parte interim measures cannot be appealed in any event (see e.g. decision 134 III 417 of the Supreme Court), ex parte interim measures need arguably not come along with a written statement of the grounds in any event. It would have been interesting to learn more about the particular urgency of this matter that urged the FPC to explore this possibility. However, nothing will be published: The parties have settled. Darn!
As mentioned on this Blog here,a timeline for the further course of the proceedings is established during the instruction hearing if no settlement is reached. It became clear that not everybody at the FPC believes that this is feasible, but Mark SCHWEIZER said that he is a die-hard optimist.
Claim construction is key in almost every case — and it might perhaps play an even more important role in the instruction hearing than ever before. However, Mark SCHWEIZER indicated that claim construction is still frequently treated like a red-headed stepchild in the briefs, and that it is hard for the court to only catch a glimpse of a party’s understanding of a certain feature from e.g. the discussion of the cited prior art.
Mark SCHWEIZER mentioned on a sidenote that he would tend to always allow joint procedural requests of both parties, as long as they do not contravene the law. Let’s see how parties make use of this flexibility.
The unconditional right to be heard sometimes leads to an essentially meaningless exchange of party submissions after formal closure of the file. Both sides feel prompted to reply just in order to formally contest the other party’s allegations. The question came up whether a court could forward such statements with the comment that the submission is deemed to be contested in any event. Mark SCHWEIZER indicated that the FPC would look into this, in particular whether this would be compliant with the CPC.
Gossip
Based on what had been mentioned at the conference I have to believe that the recent dissenting opinion had been supported by two judges; the actual split of the panel was thus 3:2. That’s a close call, indeed! See this Blog here for further information.
Sanipat’s CH’691 has already been partially surrendered twice, see below.
EP’067 is currently being challenged in EPO opposition proceedings, see EPO Register. Hafner joined the pending opposition proceedings by intervention; Art. 105(1) lit. a EPC. Oral proceedings are scheduled for 28 November 2019.
UPDATE 28 July 2020:
With decision of 21 January 2020, an Opposition Division of the EPO has revoked EP’067 ». Appeal proceedings are now pending. The FPC requested with letter of 3 June 2020 that the BoA accelerates its proceedings. With letter of 22 June 2020, the BoA confirmed that the appeal proceedings are being accelerated. The parties have been informed accordingly by the BoA, with letter of 22 June 2020 (provisionally indicating 18 January 2021 as the date of oral proceedings, if any).
The patent at stake is about an apparatus for cooking food products. More information about the patentee’s product ‘Feuerring’ can be found on the patentee’s homepage.
The only independent claim 1 of EP’003 as granted read as follows:
An apparatus for cooking food products, said apparatus comprising a firebox (4) with an axially symmetrical form, the firebox (4) having a box wall (6) and a box edge (8), which defines the box wall, and being intended to accommodate a combustion material which, during combustion, outputs the thermal energy required for cooking, and having a continuous heating surface (10) which runs substantially at a right angle to the axis (A) of the firebox (4), surrounds an opening (12) arranged about the axis and is intended for the direct cooking of the food products, wherein between the box wall (6) and the heating surface (10) there is arranged a false floor (14) which is intended to support the combustion material, characterised in that the false floor (14) and the box wall (6) have an outlet opening (24 or 22) each for removing the residue of the combustion material from the apparatus.
This can be best understood with the figures of EP’003 at hand:
Fig. 1 of EP 2 581 003 B1
Fig. 2 of EP 2 581 003 B1
Two opponents lodged an opposition against the grant of EP’003, i.e. Nouvel AG and Ofyr BV. The patent has been maintained in first instance by an Opposition Division of the EPO with interlocutory decision of 18 July 2017, in slightly amended form as follows:
Opponent Nouvel AG lodged an appeal, and the FPC now requested to accelerate these appeal proceedings. Interestingly, two separate briefs with reasons of appeal have been filed: One by Felber & Partner, the other one by Manitz Finsterwald. Patentee / respondent has filed an answer.
Update 05 October 2018:
Opponent/appellant Nouvel filed a reply on 01 October 2018.
Not much is known about the actual subject of the proceedings pending at the FPC, except for the party representatives: Simon Holzer (MLL) and Andri Hess (Homburger). In view of MLL‘s involvement in the matter, Mark Schweizer apparently stepped back and Christian Hilti is chairing these proceedings.
Der Luxusgüterkonzern Richemont liegt wegen einer patentgeschützten Erfindung mit dem Konsortium aus Rolex, Patek Philippe and Swatch Group im Clinch.
A silicon hairspring technology had been developed by the consortium, together with CSEM, already about 15 years ago.
Vor über fünfzehn Jahren haben die Grossen der Branche […] ihre Kräfte gebündelt — und mit dem Forschungsinstitut CSEM in Neuenburg die Siliziumtechnik in der Unruhspirale 2005 zur Serienreife entwickelt.
Richemont’s silicon hairspring technology Twinspir™ in Baume & Mercier’s new movement Baumatic™ apparently is the bone of contention:
Details of B&M’s Baumatic™ movement with Twinspir™ technology (website)B&M logo
The NZZaS did not provide much details about the conflict, and no sources are revealed. It is only that Baume & Mercier’s CEO, Geoffroy Lefebvre, is cited with the confirmation that discussions with the consortium are ongoing, and that no patent has been illegitimately used. B&M is said to argue that their hairspring is designed differently. According to NZZaS, the consortium does not agree, and judges will have to decide.
‘Es gibt Diskussionen mit dem Konsortium’, antwortet Lefebvre knapp. Er betont, dass kein Patent ‘gesetzeswidrig genutzt’ worden sei. Das Konsortium sieht das offenbar anders, wie von Kennern des Sachverhalts zu hören ist. Baume & Mercier argumentiert, dass ihre Unruhspirale anders aufgebaut (aus zwei Strängen) sei — und darum kein Patent verletzte. Am Ende werden die Richter den Sachverhalt klären müssen.
UPDATE 27 Sep 2018:
I have been informed that NZZaS apparently already mentioned in an article of 2 Sep 2018 that the consortium alleges a patent infringement (see here):
Das Konsortium hat offenbar bei Richemont wegen einer möglichen Patentverletzung interveniert.
Again, no sources or further details are revealed; the basis of this information is obscure. It remains to be seen how this finally unfolds.
UPDATE 07 Oct 2018:
The NZZaS continued its serial on this topic today; see here. Frankly, without any significant news. It is only that Patek Philippe apparently also believes that Baume & Mercier infringes the patent:
Patek Philippe wie auch unsere Partner Swatch und Rolex sind effektiv der Ansicht, dass Baume & Mercier unser Patent (Silinvar) verletzt.
Contrary to what Baume & Mercier’s CEO Geoffroy Lefebvre had mentioned, Patek Philippe submits that the consortium is not currently engaged in discussions with Richemont / Baume & Mercier.
UPDATE 11 Nov 2018:
Yet another update by NZZaS today. But now, it’s apparently the other way around. NZZaS mentioned in an article about the Richemont group today that Richemont has challenged the patent:
Richemont hat kürzlich das Patent des Konsortiums angegriffen. Es ist unklar, wie der Streit beigelegt wird – […].
The article reveals no further details or sources.
This decision of the Supeme Court does not concern a patent case, but it clarifies what might constitute a ground for recusal of a judge in general.
Thumbs up?
Judges are not living in an ivory tower. They even use Facebook and have ‘friends’ there. Now, is it a ground for recusal if a party is a Facebook ‘friend’ of a judge?
Well, the answer is a clear not necessarily, but maybe.
The mere fact that a judge is a Facebook ‘friend’ of a party to the proceedings does not in itself constitute a ground for recusal. Without additional information, it cannot be concluded that there indeed is a friendly relationship that could give rise to the appearance of a judge being biased.
Every person is entitled to have his case decided by an impartial, unbiased and impartial judge. It is not decisive whether or not a judge is actually biased. Even the appearance of bias or the danger of bias is to be avoided. In the case of friendly connections, this requires a certain closeness that goes beyond a mere acquaintance or a ‘dozy relationship’.
Bei freundschaftlichen Verbindungen ist dazu eine gewisse Nähe erforderlich, die über eine blosse Bekanntschaft oder ein ‘Duzverhältnis’ hinausgeht. Eine ‘Freundschaft’ auf Facebook weist noch nicht auf freundschaftliche Beziehungen im traditionellen Sinn hin.
Who’s out there?
The decision holds that a ‘friendship’ on Facebook does not yet indicate friendly relationships in the traditional sense. Mutual affection or sympathy is not necessary to establish a ‘Facebook friendship’. ‘Facebook friends’ may well include people with whom one maintains regular contact in real life; but they can also include people one would only qualify as a simple acquaintance or as a person with whom one would only have a common interest in a social network on a particular subject.
Recent studies have also shown that a number of more than 150 ‘Facebook friends’ typically include people with whom one does not have any contact or one does not even know. Without additional information, one cannot conclude from a ‘Facebook friendship’ that a friendly relationship actually exists which could lead to the appearance of bias.
In short:
A ‘Facebook friend’ is not necessarily a friend.
Reported by Martin WILMING
P.S.:
The FPC’s Guidelines on Independence can be found here. Grounds for recusal of judges are governed by Art. 3-5.
This decision has been handed down by the Federal Administrative Court, not the Federal Patent Court. Still, it will surely be of interest for patent practitioners in the pharmaceutical field.
The present matter is not about infringement, but rather all about pricing issues. It is important to understand that Lyrica® is approved for three indications:
Neuropathic pain
Epilepsy
Anxiety disorders
Patent protection for (1) only expired in July 2017 (and allegedly accounted for about 2/3 of all uses of the drug), while protection for (2) and (3) already expired in May 2013. Overall sales of Lyrica® still accounted for about 5bn of Pfizer’s annual turnover in 2017.
Further, it is important to understand some basic principles of how prescription and use of generics is promoted in Switzerland. In general, the insured person’s share of costs consists of a fixed annual amount (franchise) and a deductible of 10% of the costs exceeding the franchise (up to a certain maximum). However, if the insured person demands a more expensive medicament and waives the cheaper option, he must pay 20% of the cost of the medication instead of 10%.
Until February 2017, this differentiated deductible of 20% applied to drugs whose price exceeded the average price of the cheapest third of all drugs consisting of the same active ingredients (and listed on the specialty list) by at least 20% (since March 2017: 10%).
Pfizer appealed an order of the Federal Office of Public Health (FOPH) of 29 October 2015, in which the FOPH issued a 20% deductible for Lyrica® with effect from 1 December 2015, not taking account of different indications at all. The overall calculation is anything but easy. In a nutshell, Pfizer argued that the price level of the generics had been wrongly determined by the FOPH, based on Art. 38a KLV. In simple terms, Pfizer argued that the not yet generic indication (1) has to be excluded from the maths and that a deductible of 10% shall apply in accordance with Art. 38a(4) KLV.
The FAC did not agree. Rather, the decision holds that the Health Insurance Act (KVG) and the Ordinance on Health Insurance (KVV) only differentiate on the level of preparations, not on the level of indications (¶8.2.7, emphasis in original):
[…]; vielmehr unterscheiden KVG und KVV auf der Stufe der Präparate zwischen Originalpräparat und generischen Arzneimitteln.
Further, the decision is very clear in that the patent law does not give the patent holder the right to a certain — or even just an economically worthwhile — price in the context of the commercial use of his invention. Contrary to what the plaintiff argued, patent protection does not mean price protection (¶8.3.3):
Das Patentrecht gibt dem Patentinhaber damit kein Recht auf einen bestimmten — oder auch nur auf einen für ihn wirtschaftlich lohnenden — Preis im Rahmen der kommerziellen Nutzung seiner Erfindung. […] Entgegen den Ausführungen der Beschwerdeführerin bedeutet Patentschutz nicht Preisschutz.
Finally, the decision holds that there would have been established ways for Pfizer to exclude the not yet generic indications from the maths — but it failed to take the appropriate actions. According to the Handbook for the Specialty List (p. 51, ¶C.5.2.2; corresponding to ¶C.4.4.3 of the former version of 1 September 2011), only the market volume of the original preparation with the same indication as the generic drug is taken into account when different original preparations with different indications exist for an active ingredient. However, Pfizer only had the further indications added to the list of indications of one and the same preparation of Lyrica® (¶8.4.4):
Zu Recht weist die Vorinstanz auf die […] Möglichkeit hin, eine neue Indikation eines bereits bestehenden Wirkstoffes als neues Medikament anzumelden und in die SL aufnehmen zu lassen. Dieses Vorgehen hätte der Beschwerdeführerin ermöglicht, für ein (hypothetisches) Medikament “[…] [für] […]” bis Ende des Patentschutzes dieser Anwendung von den höheren Preisen für Originalpräparate zu profitieren, ohne gleichzeitig einen höheren Selbstbehalt in Kauf nehmen zu müssen. […] Es steht damit dem Hersteller und Patentinhaber frei, welches Vorgehen er wählen möchte, im Wissen um die jeweiligen Konsequenzen.
Pfizer logo
In the end, it’s all about money. Due to the suspensive effect of the appeal, Pfizer benefited from an unlawful deductible of 10% instead of 20% from 1 December 2015 until 31 November 2017. Accordingly, the FOPH will have to examine whether and, if so, to which extent Pfizer will have to pay a refund.
The decision is not yet final; Pfizer’s appeal is pending at the Supreme Court.
The current Swiss Civil Procedure Code has been enacted in 2011, and the Federal Council had been asked to assess its practicality and to come up with suggestions for improvement, if appropriate (motion 14.4008).
The first draft of proposed changes has been published on March 2, together with exhaustive explanatory notes. The consultation process is open until June 11, 2018.
Proceedings at the Federal Patent Court are governed by the Civil Procedure Code, and the proposed changes would have quite some implications for FPC proceedings. In my perception, the most important aspects are the following:
Costs
First, it is proposed that only half of the expected court fee may be ordered as an initial advance payment; see Art. 98(1) of the draft. Notably, this is already the current practice at the FPC since December 2015; see this Blog here.
It is also proposed that a successful plaintiff shall get his advance payment(s) refunded; see Art. 111(1) of the draft.
Collection risk
Currently, the court keeps the plaintiff’s advance payment(s) irrespective of the outcome on the merits and orders that the defendant refunds the amount to the successful plaintiff. The proposed amendment actually shifts a collection risk from (successful) plaintiffs to the State.
Finally, legal aid is currently not available for the precautionary taking of evidence. It is now proposed to explicitly provide for this possibility in Art. 118(2) of the draft.
Private expert opinions
A smart party expert
Private expert opinions are newly listed as a ‘physical record’ in Art. 177 of the draft. Note that private expert opinions are currently not considered as a means of evidence according to Art. 168 CPC, in particular not as a ‘physical record’ in the sense of Art. 177 CPC; see e.g. BGE 141 III 433. The dispatch of the Federal Council on the current CPC held that private expert opinions are admissible, but will only be considered as a statement of a party; see BBl 2006, p. 7325, 3rd paragraph. If the proposed change is adopted, party expert opinions would henceforth be subject to the court’s free assessment of evidence according to Art. 157 CPC.
Ex-parte interim measures
Ex-parte interim measures are a powerful tool – when granted. However, a request for ex-parte interim measures may backfire when the court dismisses the request. According to the current Art. 265 CPC, the court will summon the parties to a hearing and set the respondent a deadline to comment in writing. As a consequence, the respondent is informed about the ex-parte request, and there is a risk that a later enforcement of the measure might be frustrated.
It is held in Art. 265(4) of the draft that the court shall not inform the respondent of the decision and shall abstain from issuing the summons or setting the respondent a deadline to respond until it has been decided on an appeal against the decision to refuse ex-parte interim measures, if requested so by the applicant.
A verbatim transcript is also availabe here (DE only).
Now, what is next?
Once officially published, the amendment to the Patent Court Act might be challenged with an optional referendum (Art. 141 FC) within 100 days, but this is highly unlikely. Thus, one may expect the changes to be enacted in mid 2018.
UPDATE 15 March 2018:
The final parliamentary vote on this matter will be on 16 March 2018. The drafting committee has published the final version of the draft bill earlier today; see here.
UPDATE 03 April 2018:
The official publication was made on 27 March 2018, so the optional referendum is possible until 05 July 2018. Without a referendum, the amendments will enter into force on 01 August 2018.
The Swiss Federal Patent Court now has an official Twitter account and published its first tweet on Feb 14, i.e. Valentine’s day. This surely is an account to follow. Much appreciated!
The tweet was about the forthcoming hearing in the matter Guenat SA Watches Valgine ./. Swiss Finest SA that will take place on March 13, 2018 at the Hôtel de Ville de Neuchâtel. Please find some further information about this litigation on this Blog here.
I have reported about the decision 4A_18/2017 of the Swiss Supreme Court (Utz ./. Hilti) on this Blog here. It is an interesting decision for various reasons, but the factual setup is just not fully clear from the Supreme Court decision itself. I thus tried to obtain the underlying decision of the Princely High Court of the Principality of Liechtenstein, to gain further insight. I felt this should not be an issue nowadays.
Oh, how mistaken I was! The Princely High Court just put the shutters down.
Coats of Arms (LI)
I was informed that a formal request of file inspection would be required to obtain a copy of the decision. Practically, this will just not work: The parties involved need to consent (how would you ever get consent from six parties which are anonymised in the Supreme Court decision?), or one would have to have a legal interest (which obviously does not apply).
I could not even obtain an anonymised version of the decision (I did not expect more than that anyway):
Sending the anonymised decision to a foreign country is out of the question.
Eh? The ‘foreign country’ is the seat of the competent second instance court in this matter.
As a last resort, I suggested that the decision be published ex officio in the database gerichtsentscheide.li. However, only ‘selected’ decisions are included in this database. For some reason this decision is apparently not worth being selected.
Frankly, I have difficulties to accept that this is still happening nowadays. Just for the sake of comparison, note what the Swiss Supreme Court has decided in a recent case in relation to the public access to judicial decisions.
As previously reported on this Blog here and here, the Federal Assembly had elected Mark Schweizer as new President and re-elected Tobias Bremi as second permanent judge.
Frank Schnyder has also been re-elected as Vice President at the November 15, 2017 plenary assembly of the FPC.
Thus, the Administrative Board of Judges for the term of office of 2018-2023 is:
