This case pops up once in a while. We had reported about it already on this Blog here and here. It relates to a method and system carried out / installed in Switzerland for collecting the heavy vehicle charges. In brief, the plaintiff had been granted legal aid for preparing and filing an infringement complaint. After the first exchange of briefs, the judge-rapporteur had prepared an expert opinion re validity of the patent-in-suit — which did not play out favourable. Accordingly, the FPC withdrew the legal aid for the further course of the proceedings:
The plaintiff / patentee now has to submit the completed reply on his own costs, pay advance court fees of CHF 20’000,– and yet further CHF 50’000,– as security for party compensation. The Supreme Court did not even consider plaintiff’s appeal, for lack of sufficient reasoning. It remains to be seen whether this case will go on, or whether this is the end. Stay tuned.
The basic EP’668 had lapsed already back in 2015; and the SPC has also lapsed meanwhile, on 4 May 2019. But the present decisions relate to an apparent mishap shortly before the SPC finally lapsed.
Sandoz had Swissmedic’s market authorization for its generic ‘Tadalafil Sandoz’ since 7 November 2017, but did not yet put it on the market. Still, the plaintiffs came across database entries for ‘Tadalafil Sandoz’ in HCI Solutions‘ medINDEX (for physicists) and pharmINDEX (for pharmacists). These databases are used by practitioners to order pharmaceuticals. Even though ‘Tadalafil Sandoz’ could not be ordered at that time, the President held that the effect of the database entries was essentially comparable to an inquiry of future needs (see S2014_001). Potential customers are made aware that the launch of a generic is imminent. This may tempt them to postpone orders for the original product and to order the cheaper generic once it becomes available. The generic manufacturer benefits from this advertising effect to the detriment of the supplier of the original product. During the term of the SPC, such advertising constitutes a violation of the exclusive rights of the owner of the SPC.
At the face of it, the situation was apparently so clear that the President granted interim injunctive relief without hearing Sandoz beforehand, and obliged Sandoz to immediately request the database provider to delete the entries.
Decision of 21 March 2019 in case of ICOS Corp, Eli Lilly SA v. Sandoz Pharma AG re SPC for tadalafil: inclusion of product in database of available products infringes patentee’s exclusive rights even if the product cannot be ordered (ex parte injunction), https://t.co/5SLv4kFPKQ
After hearing the defendant, it turned out that Sandoz’ had not made the entries in the databases. The entries had been made the database provider, an independent third party, without Sandoz’s knowledge and intervention. The database entries had meanwhile been deleted on Sandoz’s request, and thus there was no basis anymore for interim injunctive relief. The request was thus denied.
Now, what about the costs?
As a rule, the costs are clapped on the unsuccessful party; Art. 106(1) CPC. But the court may diverge from the general principles and allocate the costs at its own discretion when a party was caused to litigate in good faith; Art. 107(1) lit. b.
The President held that even though the plaintiff’s course of action may be understandable under the given circumstances, this still does not justify that the defendant bears the costs incurred in view of the unlawful conduct of an unrelated third party:
The plaintiffs have refrained from issuing a warning to the defendant before submitting the request for action. The applicants’ action may be understandable in the circumstances, but it does not justify the defendant having to bear the costs of the proceedings. As the defendant credibly demonstrates, it had nothing to do with the unlawful conduct of a third party; it is to be regarded neither as an instigator nor as an accomplice nor as a collaborator. Nor does it exercise any control over the third party. Since the defendant is not responsible for the unlawful conduct and has not created the appearance of being responsible for it, it cannot be ordered to pay the costs.
The court fee and a compensation for legal representation of the defendant are thus to be borne by the plaintiffs.
AZ’s request for interim injunctive relief w/o hearing the defendant beforehand was dismissed with decision of 20 February 2019. Hearing the defendant didn’t change the outcome; the request was also dismissed with decision of 9 April 2019. Both requests failed for lack of urgency, given the fact that Sandoz’s generic has been on the market since 2.5 years.
At the face of it, this appears to be pretty straight forward, in particular in view of the most recent decisions S2018_006 (¶13) and S2019_001 (¶6) emphasizing the 14 months time bar in no uncertain terms.
But the devil is in the detail. Maybe.
This is not the first time that the FPC had to deal with EP’573. The patent had been revoked for lack of inventive step over Howell in view of McLeskey; see this Blog here. But AZ appealed and essentially argued that the FPC erroneously assumed a (concrete) pharmaceutical formulation in Howell, thus incorrectly defined the distinguishing features and the (objective) technical problem, and then wrongly concluded for lack of inventive step.
And, indeed, the Supreme Court agreed and remitted the case for re-assessment of inventive step; see this Blog here. From the reasons of the present decisions, we can now catch a glimpse of what is currently going on in the remitted proceedings (formerly O2015_011, now O2018_009): The judge-rapporteur held on 23 November 2018 that the patent was valid. But it is not only that the wind has changed at the FPC. The Gerechtshof Den Haag also held that the patent was valid, in second instance proceedings. Likewise, a Board of Appeal at the EPO overruled the first instance revocation of an opposition division and finally ruled on 24 January 2019 that the patent was valid.
On the other hand, this is also not the first time that AZ sought injunctive relief for Sandoz’s generic. AZ had asserted a different patent against the same generic already in summary proceedings S2016_007, i.e. EP'138. It becomes clear from the present decisions that these earlier proceedings had been terminated because AZ had withdrawn the requests.
Now, here is a timeline events which is colored to reflect my very personal view on the prima facie validity of EP’573 over time:
One may conclude from the above timeline that there had been some red(-ish) flags concerning the validity of EP’573 for quite a long time.
The decisions note in passing that main infringement proceedings with case no. O2017_014 concerning Sandoz’s generic are pending in parallel, but based on a different patent (EP'195); from the case no. it is clear that this suit has been brought in 2017, but no further information is available to date.
Further, the decision indicates that in some proceedings with case no. O2018_010 the very same EP’573 is at stake as in the present matter, but the defendant is not revealed.
AZ essentially argued that it had been prevented from bringing the request for interim injunctive relief earlier because of the previously negative assessment of validity EP’573 by the EPO, the FPC (O2015_011) and the district court of The Hague (NL), and that the wind has changed only very recently; see timeline above.
The single judge did not buy into that and emphasized that AZ had undoubtedly been aware of Sandoz’s generic since 26 July 2016; AZ could have lodged main proceedings at any time since then. The decision further holds (¶22; inofficial translation):
[T]he decision of the Board of Appeal of the EPO of 24 January 2019 […] may substantiate the claim to which the plaintiff is entitled with regard to the validity of the patent in suit, but in no way justifies urgency. […]
Ultimately, however, all parallel proceedings have no influence on the purely procedural question of urgency in the present summary proceedings. […]
The tactical awaiting of a foreign parallel decision on the patent in suit before an action is lodged does not belong to the subjective but rather to the subjective circumstances.
It surely is a tough exercise to fit the gist of a decision in a single tweet; but the FPC’s tweet on the decision is straight to the point:
A decision of a Board of Appeal of the EPO does not give rise to urgency where the contested product has been on the market for 30 months.
Urteil v. 9. April 2019 i.S. AstraZeneca AB g. Sandoz Pharma AG re vorsorgl. Massnahme (#Fulvestrant): ein Entscheide einer Beschwerdekammer des EPA begründet keine Dringlichkeit, wenn das angegriffene Produkt schon seit 30 Monaten auf dem Markt ist, https://t.co/iinRKiYDWk
The approach taken in the present decisions in my understanding focuses much more on the total time than on the apparent change of prima facie validity of the patent in suit over time. While the 14 months time bar is comparably generous (German courts typically deny urgency after 1-2 months, in my experience), it seems to be a pretty rigid time bar nowadays.
In an earlier case at the FPC, urgency had still been acknowledged for a request that had been filed five months after a BoA of the EPO had maintained the patent in suit which had been revoked in first instance by an opposition division (S2013_004, decision of 12 May 2014, ¶4.8).
It will be interesting to see how the FPC’s approach in the assessment of urgency will develop.
The notified party conducting the proceedings in place of the notifying party acts as representative of the notifying party.
This order clarifies some important aspects of third party notice and third party action. The general principles are set out in Art. 78 CPC: A party may notify a third party of the dispute if, in the event of being unsuccessful, he or she might take recourse against or be subject to recourse by a third party. The notified third party may also give notice of the dispute.
In practical terms, the notified third party may, according to Art. 79(2) CPC, either
intervene in favour of the notifying principal party, without further conditions; or
proceed in place of the notifying principal party, with the consent of the latter.
Now, what is the standing of the notified party in case of lit. b, above?
The FPC follows the practice of the High Court of Zurich (Obergericht; PP140001-O/U) and the Commercial Court of Bern (Handelsgericht; HG 15 12) in that there is no room for an arbitrary change of parties (gewillkürter Parteiwechsel) — even though the mere wording of Art. 79(2) CPC might suggest it. The order holds that this would be too much of an intervention into the procedural rights of the counterparty, and there is no indication whatsoever that the legislator indeed had intended it to be this way.
Thus, the approach now also taken by the FPC effectively (only) relieves the notifying party of the burden of litigation, but clarifies that the legal effects of the judgment continue to apply to him. The notified party is therefore involved as such in the proceedings without the defendants 1 and 2 being released from the proceedings. The notified party only acts as the representative of defendants 1 and 2.
Accordingly, as is customary in the case of arbitrary representation, judicial correspondence will only be served to the notified party. Defendants 1 and 2 must have the actions and declarations of the notified party counted as their own.
In sum, Art. 79(2) CPC is anything but a comfortable ejection seat to easily get out of the danger zone.
Reported by Martin WILMING
O2017_25: Kein Parteiwechsel bei Führung des Prozesses durch die streitberufene Partei; die streitberufene Partei handelt als Stellvertreterin der streitverkündenden Partei (Art. 79 Abs. 1 lit. b ZPO), https://t.co/HMITb04mPJ#ZPO#CPC
Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendant.
The plaintiffs requested ex parte interim injunctive relief, i.e. without hearing the defendant beforehand. In principle, this is possible in cases of special urgency; Art. 265 CPC. It goes without saying that a plaintiff should act quickly in a case of special urgency. But how quickly does one need to take action so that it is not considered (too) late? The present decision provides further guidance in this respect.
In cases of alleged urgency, the court examines whether the request has not obviously been delayed or could reasonably have been and should have been filed earlier. If this is the case, it is no longer justified to not hear the defendant beforehand. If a plaintiff waits considerably longer after a triggering event than the time limit that is typically set for the defendant to respond in summary proceedings, the case can hardly be assumed to be particularly urgent.
[B]eim Fall der zeitlichen Dringlichkeit ist weiter zu prüfen, ob das Gesuch nicht offensichtlich hinausgezögert worden ist respektive vernünftigerweise früher hätte gestellt werden können und müssen, mithin das Weglassen der Anhörung der Gegenseite nicht mehr gerechtfertigt ist. Die relevante Zeitskala bemisst sich dabei unter anderem an der Zeit, die typischerweise der Gegenseite zur Stellungnahme eingeräumt wird. Wartet die Gesuchstellerin ohne erkennbare Gründe mit der Einreichung des superprovisorischen Gesuchs nach einem auslösenden Ereignis deutlich länger zu, als der Gegenseite in einem Massnahmeverfahren zur Stellungnahme eingeräumt wird, kann schwerlich von besonderer Dringlichkeit im Sinne von Art. 265 ZPO ausgegangen werden, die ein Weglassen der Anhörung der Gegenseite rechtfertigt.
Plaintiffs argued that the defendant had already ample opportunity in prior / parallel proceedings to provide comments. Accordingly, new arguments were not to be reckoned with. The decision holds that this has nothing to do with the alleged urgency, and that there may well be new arguments since parallel proceedings are pending elsewhere.
Further, plaintiffs argued that the expected delay in co-pending nullity proceedings caused urgency of the present request for injunctive relief. However, the decision holds that the course of the parallel nullity proceedings is not out of the ordinary, and plaintiffs could have lodged a claim for infringement in main proceedings since more than a year ago – but did not do so.
Note that the request for ex parte interim measures had been filed more than one month after the parties had been informed about availability of hearing dates in parallel nullity proceedings no earlier than end of August 2018, and the plaintiff indicated one of these dates as ‘suitable and preferred’ (‘geeignet und bevorzugt’). Only later, plaintiffs requested an earlier hearing date – which could not be arranged anymore.
Moreover, the present request was filed more than two months after receipt of the opinion of the judge-rapporteur. If this was considered as the triggering event (in view of a changed opinion of the judge-rapporteur), the request could and should have been filed much earlier.
Finally, plaintiffs noted that previous summary proceedings took about six months to conclude. A similar duration in the present proceedings would result in a decision only after the hearing date in parallel nullity proceedings. The decision holds that this, again, has nothing to do with the required urgency.
The request for ex parte interim injunctive relief was thus dismissed, and inter partes summary proceedings are now ongoing.
Reported by Martin WILMING
S2018_002: Abweisung Antrag auf Erlass eines Vertriebsverbots betreffend Generikum ohne Anhörung der Gegenseite (superprovisorisch) mangels besonderer Dringlichkeit, https://t.co/ogXh9GNSll
The defendant in this matter had notified the SPC holder of the imminent launch of its generic product in Switzerland, before a decision in parallel nullity proceedings was available. The validity of the SPC had been challenged in parallel nullity proceedings based on the SPC case law of the CJEU and an accordingly to be revised Swiss practice.
The plaintiff sought for interim injunctive relief without hearing the defendant beforehand. Since the critical issue had not yet been decided in parallel nullity proceedings, interim injunctive relief has provisionally been granted. The defendant has been invited to file a response.
A previous version of this post mentioned Bruno MEYER as an assisting patent attorney on behalf of the defendant. I have been informed that this is wrong; he is actually engaged on behalf of the plaintiff. This has been corrected hereinbelow.
This procedural order is almost a blueprint of a published order in the case O2012_039; see this Blog here. Again, an alleged infringer argued for nullity as a plea in defense with his answer to the suit. Prior to the preparatory hearing, the plaintiff had been ordered and actually provided a reply only with respect to the alleged nullity, for the time being. So far so good.
But the defendant filed a factual rejoinder concerning the (in)validity of the patent in suit. This evidently frustrated the court’s intention to have one(!) reply of each party on file pertaining to the questions of infringement and nullity. Consequently, the FPC decided to not take the defendant’s submission on file at all, for the time being. The defendant may re-file the same after the preparatory hearing, with his rejoinder.
Die Prozessleitung ist Sache des Gerichts (Art. 124 Abs. 1 ZPO). Wenn die Beklagten hier nun ungefragt mit einer faktischen Duplik zur Bestandesfrage reagieren, wird das Bestreben des Gerichts, die Waffengleichheit der Parteien zu wahren, unterlaufen. Das ist zu unterbinden. Entsprechend ist die Eingabe der Beklagten (samt Beilagen) aus dem Recht zu weisen. Es steht den Beklagten frei, das Vorgebrachte (nach der Instruktionsverhandlung) im Rahmen der dann einzuholenden Duplik erneut vorzutragen.
The background of this case is a cooperation with an unhappy ending, at least concerning the resulting IP. The plaintiff (A) and one of the defendants (B) had signed a confidentiality agreement on 12 July 2015 for the purpose of a joint development. Two employees of A had then worked on this project and exchanged their respective results by Email. These results were then shared with B in working meetings later on, and a specific solution was sent to B by Email on 10 September 2015. B then filed a Swiss patent application on its own on 25 November 2015. That would be enough to blow most cooperations, but it even got worse: B informed A on 11 October 2016 that the patent application had been assigned to D. And on 29 November 2016, A was informed that the patent application had been assigned to C.
A was not amused and requested that a register ban be ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution; and that B, C and D be ordered to abstain from any actions towards this end. These requests were indeed granted inasmuch as the Swiss patent application is concerned. On the contrary, the request was held inadmissible with respect to related applications unspecifically referred to in the requests. Likewise, a request for a register ban at the EPO was held inadmissible; this has to be effected in accordance with Art. 61 and R. 14 EPC.
The decision (again) outlines the essential criteria to be dealt with in patent (application) ownership disputes:
Who actually has invented the disputed technology?
How has the plaintiff obtained the right to be granted a patent for this technology?
How has the defendant / patent applicant been informed about this technology?
How is the technology reflected in the patent application at stake?
The decision holds that these criteria have been met by prima facie evidence: The plaintiff (1.) had identified the inventors; (2.) how he obtained the right to be granted a patent (i.e. by virtue of Art. 332 CO as employer); (3.) how this information had been conveyed to B (see timeline above); and (4.) how this is reflected in the patent application under dispute: Apparently, Fig. 1 of the patent application reflects all the essential elements which also corresponds to the wording of claim 1.
The multiple assignments underlined the risk of a not easily reparable harm for the plaintiff. On the contrary, the defendants are not substantially harmed by the ex parte order. As to the urgency of the matter, the decision holds that the plaintiff had acted with sufficient diligence on 18 January 2017 after having been notified of the (second) assignment on 29 November 2016, i.e. seven weeks ago. Summary proceedings can still be concluded earlier than potential main proceedings which typically take one year.
On the other hand, the diligence required for the ex parte order is less clear to me. The FPC held in an earlier case that seven weeks (what a coincidence!) were too long for a plaintiff to wait — rather, one should act ‘within one or two weeks in any event’; see this Blog here. The devil may be in the (yet unknown) detail.
As to the technology concerned, the bone of contention is a latch for a watch band with a folding clasp which can carry a biometric insert.
[…] fermoir pour bracelet de montre comportant une boucle déployante permettant de loger un insert biometrique […]
The Swiss patent application at stake has been filed only less than 18 months ago (25 November 2015); it is not yet published. We will learn more on or shortly after 25 May 2017.
And the parties? According to publicly available information, there are not too many companies in Switzerland working on exactly this topic. Actually, I could only spot a single fit I feel confident enough to share: Biowatch SA. See their promotional video from 36s onwards (embedded from Youtube):
Biowatch’s Matthias Vanoni said in an interview with welt.de on 24 February 2016 that they were developing a new latch for a watch band with a special fitting for the biometric module together with a cooperation partner, i.e. Oréade SA:
The hearing scheduled for March 29, 2017 will provide further insight, and the Swiss patent application will be published end of May 2017. Stay tuned!
UPDATE March 6, 2017:
The hearing scheduled for March 29, 2017 has just been canceled.
UPDATE May 31, 2017:
The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.
UPDATE Oct 2, 2017:
The matter has apparently been settled by compromise; see Matthias Vanoni’s comment in the comments section below.
This decision provides very early insight into a litigation with an apparently rather complex setup. The plaintiff had initiated main proceedings on January 11, 2017, inter alia alleging co-ownership of two patent families currently held by the defendant. Only two days later, the plaintiff requested ex parte interim measures, i.e. that the defendant be ordered to preserve the status quo of the patent families in suit (with respect to ownership, licenses, etc.), and that a ban be noted in the Swiss patent register to prevent any changes to the Swiss part of the already granted European patent.
Allegedly, an employee of the Swiss plaintiff has largely contributed to the subject invention(s), in a joint development together with the CEO of the defendant (a company domiciled in Sweden). Two patent families are at stake, with an already granted European patent in the first family. EPO prosecution is still pending in the second family, while patents have already been granted in the U.S., Japan and Russia.
First, the President holds that the FPC only has territorial jurisdiction for the Swiss part of the European patent at stake; Art. 1(2) IPRA, Art. 31 LugC, Art. 10 lit. b IPRA. Note that the patentee / defendant is domiciled in Sweden! The request has thus not been considered at all as far as it concerned foreign patent rights.
What remains is the Swiss part of the already granted European patent. Swiss law is applicable in this respect; Art. 110(1) IPRA. In general terms, the requested injunction and the order to a register authority would be possible in accordance with Art. 262 lit. a and c CPC. However, the President held that the plaintiff failed to show the three necessary elements, i.e.
that the employee of the plaintiff has contributed to or made this invention (what exactly, when, where and how);
how the defendant has been made aware of this invention (or parts thereof); and
how the subject-matter claimed by the defendant actually corresponds to this invention.
The plaintiff apparently did not discuss how the contribution of its employee is reflected in the claims; see item iii, above. Co-ownership was thus held to be not established for this reason alone.
Moreover, the President notes that the plaintiff failed to show an actual risk that any of the acts to be prohibited might materialize. The request also failed for this reason.
The routine exercise: Who are the parties?
Admittedly, that’s been a tricky puzzle this time. The decision is anonymized beyond recognition. Almost. We could spot a single perfect fit:
Case No. S2017_001 ¦ Order of 16 January 2017¦ “Abweisung superprovisorische Massnahme”
Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendant.
The patentee / plaintiff requested interim injunctive relief to be ordered without hearing the defendant beforehand, in view of special urgency. The FPC did not do so. In principle, the President could decide in the capacity of a judge sitting alone in summary proceedings (Art. 23(1) lit. b PatCA). But the present matter requires the assessment of patentability of the patent in suit; both parties are engaged in co-pending nullity proceedings at the FPC. In such cases, i.e. where the understanding of a technical matter is of particular significance, decisions must be made in a panel of three; see Art. 23(3) PatCA. It takes some time to staff the panel of judges from the pool of non-permanent judges who have to do a thorough check for conflicts. It would be unbalanced to not hear the defendant meanwhile since this will not delay the decision as such. The defendant has thus been ordered to file a response within only seven days. This short time was held appropriate since both parties are well acquainted with the subject-matter at stake from the co-pending nullity proceedings.
On the procedural side, there are two further aspects to note. First, the plaintiff had drafted its submission in English language, with reference to an agreement between the parties in this respect in co-pending nullity proceedings. The President held that this does not necessarily imply consent to the use of English language in the present proceedings — but provisionally and in the absence of an immediate information of the defendant to the contrary, consent will be assumed. Second, the President notes that a hearing on short notice might be necessary. A date will be fixed by way of precaution, as soon as the panel of judges is staffed.
Reported by Martin WILMING
Case No. S2017_001 ¦ Order of 16 January 2017¦ “Abweisung superprovisorische Massnahme”
Well, shame on me, I haven’t seen the wood for the trees: The procedural decision in the matter O2016_003 (reported here) obviously relates to the suit filed by Illumina and Verinata Health against Genoma; see this Blog here.
“EP 222” is EP 2 183 693 B1. The hearing before the OD is scheduled for 08 June 2016; see EPO Register for details. [UPDATE 29 July 2016: The OD has decided to maintain the patent in amended form on the basis of the first auxiliary request.]
Entities A and B (in a joinder of parties) have sued C for patent infringement. Four European patents are at stake (EP 000, EP 111, EP 222 and EP 333). A and B are exclusive licensees of the patents: Entity A is licensee of EP 000, EP 222 and EP 333; B is licensee of EP 111. The case has been separated in view of the different status of proceedings at the EPO (don’t be misled by the german term ‘Rechtsstand’ used in the decision; the formal status of all the patents is obviously granted): Opposition proceedings at the EPO have already been concluded for one of the patents (EP 000). For two other patents (EP 111 and EP 222), oral proceedings are scheduled for September and June 2016, respectively. The last patent in suit has only been granted in February 2016 and it is thus still open for opposition (EP 333).
The FPC held that the case would be ready for decision at very different points of time, depending on the status of proceedings at the EPO. Thus, the FPC ordered the separation of the jointly filed action in order to simplify the proceedings; Art. 125 CPC, lit. b:
The suit based on EP 000 (plaintiff A) will be continued under case ID O2016_003;
The suit based on EP 111 (plaintiff B) will be separately continued under case ID O2016_004;
The suit based on EP 222 and EP 333 (plaintiff A) will be separately continued under case ID O2016_005.
Another issue at stake is the choice of the language to be used by the parties. The plaintiffs used the English language and have submitted a letter allegedly confirming the agreement of the defendant with the use of the English language. However, the letter was apparently not issued by the defendant itself but a parent company. This letter was thus not considered as a consent of the defendant in accordance with Art. 36(3) PatCA; such consent is still outstanding.