Getting off to a lightning start in PI proceedings

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Case No. S2022_002 | Order of 2 June 2022 | ‘Fingolimod 0.5 mg’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved on behalf of the Defendant.

Patent prosecution takes time. So do infringement proceedings. But can the two overlap when time is of the essence? Clearly, a patent has to be granted at the time when an injunction is issued. But when is the earliest you can initiate infringement proceedings?

For main proceedings, various scholars had already held that infringement proceedings can be initiated before grant of the patent; at least when the claims are fixed.

But what about PI proceedings?

In S2021_007, PI proceedings had been initiated when all formalities at the EPO had already been completed and the publication of the mention of the grant was already scheduled; Art. 97(3) EPC. Shortly before the scheduled publication of the grant, a third party lodged an assignment action at the FPC; PI proceedings were not dismissed but stayed pending conclusion of the assignment proceedings.

A recent procedural order in S2022_002 completes the picture; the metes and bounds of quick-starting PI proceedings are getting more and more clear. In that case, the plaintiff / not-yet-patentee had succeeded in appeal proceedings at the EPO; a BoA remitted the case to the ED with the order to grant a patent with a specific claim set, and a description to be adapted thereto. The ED had not picked up the file again, i.e. not even a communication under R. 71(3) EPC had been issued, when the PI proceedings were initiated.

The order holds that the claims are fixed by way of the order of the BoA; cf. Guidelines E-XII, 9.2 and T113/92, hn.

Further, the grant of the patent can be expected earlier than a decision in the present PI proceedings (contrary to S2021_007 with the cumbersome assignment action as a road blocker). In the unexpected event that PI proceedings were ripe for decision before the patent is granted, the judgment would be suspended.

Accordingly, PI proceedings are continued.

/MW

UPDATE 18 JUNE 2022: The order has been published in non-anonymized form yesterday. I have updated the bibliography accordingly.

BIBLIOGRAPHY

Case No. S2022_002 | Order of 2 June 2022 | ‘Fingolimod 0.5 mg’

Novartis AG
./.
Mepha Pharma AG

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ORDER

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Undoing an improper assignment, the hard way

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Case no. S2022_001 | Judgment of 2 March 2022 | ‘Pelliheat; register ban’

I came across this case by accident. Apparently, I am not running out of things that can go wrong (fortunately, not only my own stuff).

Pelliheat stove

This case pertains to an ownership issue concerning EP 3 937 613; see the EPO Register for further information. EP 613 is a Euro-PCT application based on WO 2020 / 183 432 A1. The IPRP was promising at least for some claims; amended claims have meanwhile been filed with the EPO.

The initially registered applicant was Pelliheat. In December 2021, the EPO was requested to register a transfer of EP 613 from Pelliheat to Hans SCHÄREN, based on this assignment. Note that Mr SCHÄREN is a member of the board of directors of Pelliheat.

The EPO registered the transfer as requested, without further ado.

Pelliheat logo

However, the President of the board of directors of Pelliheat was not amused and wrote a letter to the EPO, pointing to the fact that Mr SCHÄREN had not been authorized to assign the patent application. Indeed, the commercial register shows that Mr SCHÄREN has no signatory power alone.

With reference to J 17/14 (r. 2.3 et seqq.), the EPO informed Pelliheat that it cannot do anything about it anymore. Registration of the transfer was in conformance with R. 22 EPC, and there was no reason for the EPO to doubt that Mr SCHÄREN, identified as a director of Pelliheat, had signatory power to effect the assignment.

I wonder: Couldn’t — and shouldn’t — the EPO have prevented this mess from happening? The EPO Guidelines, E XIV 3, hold (emphasis added):

Where a document is signed on behalf of a legal person, only such persons as are entitled to sign by law, by the legal person’s articles of association or equivalent or by a special mandate may do so. National law applies in that respect. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. The EPO will in particular examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity.

According to Art. 718 CO, each director has the power to represent the company. But this is subject to the explicit proviso «unless the articles of association or the organisational regulations stipulate otherwise» — which is the case here, according to the commercial register which is always only a mouse click away. The signatory power of Mr SCHÄREN does not result directly from his position as director.

Accordingly, Pelliheat had to involve the FPC to get things straight again. In first place, Pelliheat requested a declaratory judgment in summary proceedings under Art. 257 CPC (legal protection in clear cases) to the effect that the assignment declaration was insufficient to establish a transfer, and an ex parte register ban to prevent further transfer or abandonment of EP 613. The latter was granted, and proceedings at the EPO have been stayed accordingly. The request for a declaratory judgment is still pending.

The ex parte judgment contains an interesting consideration on the necessary particular urgency for a register ban. Even though Pelliheat had knownledge of the transfer since more than 9w, particular urgency was still acknowledged:

This is a much more liberal approach than e.g. in S2012_009 when a delay of 7w was held (much) too long and that one should have acted at least within 1-2w (cf. r. 5), and longer than the 7w that had been accepted e.g. in S2017_003.

/ MW

BIBLIOGRAPHY

Case no. S2022_001 | Judgment of 2 March 2022 | ‘Pelliheat; register ban’

Pelliheat AG
./.
Hans SCHÄREN

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • n/a

EX PARTE JUDGMENT

PATENT APPLICATION IN SUIT

WO 2020 / 183 432 A1:

Amended claims in EPO proceedings:

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PI proceedings suspended in view of co-pending entitlement action

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Case No. S2021_007 | Judgment of 4 January 2022

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.
HEADNOTE

Art. 111 para. 1 PatA; Provisional protection conferred by a published European patent application:

Even if the European Patent Office has announced the grant of the patent, a European patent application does not enjoy protection under Art. 64 EPC before it is granted.

The plaintiff had requested a preliminary injunction on 26 October 2021, based on two European patent applications for which the EPO had already scheduled the date of grant for sometime in November 2021.

Still before the actual grant, a third party jumped in and lodged entitlement proceedings at the FPC with respect to certain claims of both these patents. The third party also requested the EPO to stay the proceedings for grant, in accordance with R. 14 EPC. Accordingly, EPO proceedings are currently stayed and the patents have not yet been issued.

The judgment holds that the wording of Art. 111 para. 1 PatA leaves no room for an interpretarion that would allow provisional protection when examination on the merits has been concluded but the patent has not yet been issued; see the hn above.

Thus, the entitlement action thwarted the PI proceedings. However, the PI proceedings were not dismissed (as requested by defendant) but merely suspended while entitlement proceedings are pending; Art. 126 para. 1 CPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2021_007 | Judgment of 4 January 2022

X SA
./.
Y SA

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Urs PORTMANN (PV)

JUDGMENT IN FULL

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Pear sued Apple for patent infringement: iMessage service at stake

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Case No. 02020_014 | Order of 4 January 2022 | ‘iMessage’

Apple logo

We have reported about a first excursion of this docket to the Supreme Court already on this Blog here. At that time, the parties and the subject-matter at stake remained unclear. Meanwhile, the dust has settled (at least a little). The FPC has published a procedural order earlier today, finally revealing the parties. Various entities within the Apple group of companies have been sued for patent infringement. The plaintiff is Pear AG, a company that I had never heard of before.

no apple

From the subject-matter discussed in the order, I conclude that Apple’s iMessage service is at stake. The patents are not specifically mentioned in the order, but Pear is registered owner of only two patents in Switzerland, making the math easy since it was known already from the Supreme Court judgment that two patents are asserted. Pear’s two patents are EP 1 838 074 B1 and EP 1 208 687 B1. The initial applicant was Freie Erfindungskünstler® GmbH (I did not make this up!). Both patents have lapsed already, on 11 May 2020 (EP 074 is a divisional of EP 687). Accordingly, an injunction is not at stake anymore; the whole case is about damages — if the patents were valid and infringed.

In broadest sense, the patents relate to methods for the transmission of information from one mobile phone to another, wherein e.g. an emoji is not being transmitted as such between the two devices, but rather as a sequence of signs (e.g. as a descriptive word); see claim 1 of EP 687 and claim 1 of EP 074. The respective emoji associated with the word is read out from a local memory at the receiving mobile phone, thereby eliminating the need for actually transmitting the more extensive image data via the mobile network. This is my favorite example:

Sending ‘beer’ over the network instead of the extensive image data …

Now, what is the procedural order all about?

Apple had requested that an affidavit of Mr Kevin LINDEMAN shall be made available to the plaintiff only for inspection, with the obligation to not copy it, not to provide it to third parties or to use it for any other purposes than the present proceedings:

Message logo

In principle, protective measures are foreshadowed in Art. 156 CPC and Art. 68 PatA, in order to safeguard trade secrets. The FPC served the plaintiff with the affidavit, provisionally with the protective measures in place, and gave the plaintiff the opportunity to comment. The order holds that neither the position and responsibilities of Mr LINDEMAN (essentially also available on LinkedIn) nor technical informations contained in the affidavit were of sensitive nature; the latter being either self-evident for any layman or at least for any technically skilled person, or from Apple’s patent families naming Mr LINDEMAN as inventor. Including this one:

Accordingly, the provisional protective order has been lifted again.

Unsurprisingly, the order holds that court fees will be dealt with in the final judgment. However, the order also holds that Apple’s request for a protective order incurred ‘unnecessary costs’ for Pear to comment on it; Art. 108 CPC. Accordingly, Apple has to pay Pear a compensation of CHF 1’000,–. Apple will likely not even notice, but I find this somewhat harsh(?). Even though the request was unsuccessful on the merits, Apple may well have considered it necessary to defend a legitimate interest. Anyway, that’s a sideshow. The final judgment will be a lot more interesting. 

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 02020_014 | Order of 4 January 2022 | ‘iMessage’

Pear AG
./.
(1)
(2)
(3)
Apple Inc.
Apple Distribution International Ltd
Apple Retail Switzerland GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Peter RIGLING

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ORDER OF THE FPC

SUPREME COURT JUDGMENT

PATENTS IN SUIT

EP 1 838 074 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

EP 1 208 687 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

INVENTOR LINDEMAN

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Ex parte interim injunctive relief granted and confirmed after hearing the Defendant

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Case No. S2021_003 | Decision of 15 September 2021 | ‘Baugerüst’

DISCLOSURE NOTICE
Hepp Wenger Ryffel is involved in this matter on behalf of the Plaintiff / Tobler AG.

The patent at stake is EP 2 881 521 B1; cf. EPO Register and Swissreg for further bibliographic information. Tobler AG had requested interim injunctive relief for Vijator Schweiz GmbH‘s scaffolds of the “WAS-M” type with a diagonal strut of rectangular, oval or pentagonal shape (cf. claim 1 of EP 521):

Notably, Vijator Schweiz had admitted that EP 521 was valid and infringed by its WAS-M scaffolds; cf. ¶16.  Nevertheless, Vijator Schweiz had indicated to Tobler after having been served with the request for interim injuntive relief that it would export the remaining WAS-M scaffold as soon as possible. This gave rise to ex parte interim injunctive relief by order of 16 June 2021, prohibiting such export. Further, Vijator Schweiz did not submit an unconditional cease and desist declaration, but rather only declared that it would do so in case the FPC would order interim injunctive relief. The threat of (further) infringing acts and of not easily reparable harm was thus established; cf. ¶17, 20.

Tobler logo

Urgency was given, too: Tobler had undisputedly become aware of the infringing acts only in April 2021, i.e. the request for interim injunctive relief was filed soon thereafter (25 May 2021) and well before the 14 months bar for ‘relative urgency’; ¶21.

Commensurability of interim injunctive relief was a non-issue since Vijator had declared that it would provide a cease and desist declaration when the FPC would order interim injunctive relief; cf. ¶24.

The parties were far apart with their respective estimates of the value in dispute: Tobler assumed CHF 100’000,–, while Vijator Schweiz submitted that it had only made a profit of CHF 1’000,– with the infringing scaffolds. The judgment holds that in case of such discrepancy the higher value is typically to be taken — and it is Plaintiff’s commercial interest which is relevant for the value in dispute, not Defendant’s profits; ¶30.

In a nutshell, interim injunctive relief was ordered as requested, including a prohibition to export.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2021_003 | Decision of 15 September 2021 | ‘Baugerüst’

Tobler AG
./.
Vijator Schweiz GmbH

Single Judge (President):

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • n/a
    • n/a, assisting in patent matters

DECISION IN FULL

EX PARTE INTERIM INJUNCTION

PATENT IN SUIT

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No need to open books in order to prevent a security for party compensation

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Case No. O2020_004 | Order of 3 March 2021 | ‘Security for party compensation’

The defendant in this infringement case had requested that the plaintiff be ordered to provide a security for its party compensation in case of failure of plaintiff’s complaint. Art. 99 CPC indeed provides for this, as follows:

At the request of the defendant, ...

… the plaintiff must provide security for party costs:

    1. if he or she has no residence or registered office in Switzerland;
    2. if he or she appears to be insolvent, notably if he or she has been declared bankrupt or is involved in ongoing composition proceedings or if certificates of unpaid debts have been issued;
    3. if he or she owes costs from prior proceedings; or
    4. if for other reasons there seems to be a considerable risk that the compensation will not be paid.

Swiss patent troll?

None of lit. a.-c. was applicable, but defendant argued extensively under lit. d that there was still a considerable risk that the compensation will not be paid. Essentially, defendant argued that the plaintiff is a non-practicing entity (NPE), aka patent troll. What is more, the plaintiff only holds a single European patent, i.e. the patent in suit. The defendant argued that in case of failure of the complaint — in particular for invalidity, as asserted by the defendant—, plaintiff’s only asset was shattered. In the defendant’s view, the plaintiff has manoeuvred itself into a situation where losing is a no-go. The dismissal of the claim would very likely mean bankruptcy for the plaintiff; and the party compensation would not be recoverable anymore.

In first place, the order holds that the reasons invoked under lit. d need to be of comparable severity to lit. a-c, in order to not run against the ratio legis (BGE 141 III 155, ¶4.2).

Second, it is held that ‘full conviction’ (volle Überzeugung) is the applicable standard of proof:

Accordingly, this did not play out to the defendant’s advantage. The President was not fully convinced that the plaintiff would not be able to pay the party compensation if necessary.

Further, the defendant has apparently requested that the plaintiff be ordered to open its books to allow for an assessment of whether or not the party compensation would be affordable. Indeed, there is a duty of cooperation foreseen in Art. 160 CPC, and in particular lit. b might read on this. However, the President held that defendant’s arguments were too vague for such a drastic step. Deciding otherwise would effectively mean that a non-practicing entity would always have to open its books in order to prevent a security for party compensation.

There is an interesting sidenote in the order which, in my reading, signals some sympathy for the plaintiff’s concerns and the request for a security (de lege lata, …). But, unfortunately(?), the law as it stands does not allow for it, based on the facts and arguments on file (de lege lata, …).

Decoding of the anonymization is still ongoing. Stay tuned.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_004 | Order of 3 March 2021 | ‘Security for party compensation’

[n/a]
./.
[n/a]

Single Judge:

    • Dr. Mark SCHWEIZER

 

  • Court Clerk:
      • Susanne ANDERHALDEN

     

  • Representative(s) of Plaintiff:

     

  • Representative(s) of Defendant:
      • Dr. Simon HOLZER (MLL)
      • Louisa GALBRAITH (MLL)
      • Dr. Kurt SUTTER (Blum), assisting in patent matters
      • Martin TOLETI (Blum), assisting in patent matters

    DECISION IN FULL

    PATENT IN SUIT

    [n/a]

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  • How often can you kick a can?!

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    Case No. O2020_006 | Order of 16 September 2020 | ‘IML Verfahren mit elektrostatischer Haftung’

    Rotho logo

    Rotho Kunststoff had lodged invalidation proceedings in April 2020 against Keter Plastic with respect to EP(CH) 2 121 271 B1; see the European Register and Swissreg for further bibliographic information. Keter countersued for infringement. However, with the present order, the FPC held that Keter’s countersuit is inadmissible — because this claim is already pending in court.

    Keter logo

    Indeed, the same parties have locked jaws in parallel infringement proceedings O2017_024. The order holds that in the co-pending case the same patent and the same attacked embodiments are at stake. Note that the main hearing in that matter is scheduled to take place on 22 October 2020, i.e. the formal closure of the file has already occured.

    The decision holds that the present counter-claim for infringement is already comprised in Keter’s co-pending infringement action. The fact that an even more (verbally) limited claim of EP 271 is invoked in the present proceedings does not change anything in this respect.

    So, for once the question is not: «Who is kicking my can?!», but rather how often you may kick it. The answer is: Once, with one and the same foot.

    When both cases finally unfold, it will be interesting to learn more about Rotho’s motivation to lodge invalidation proceedings only in early 2020 when they had relied on invalidity as a plea in defense in parallel proceedings for about 2.5 years. We shall see.

    UPDATE 6 November 2020:

    The decision has been appealed.

    UPDATE 23 April 2020:

    The appeal has been held inadmissible for lack of a legal interest; see 4A_539/2020.

    Reported by Martin WILMING

    BIBLIOGRAPHY

    Case No. O2020_006 | Order of 16 September 2020 | ‘IML Verfahren mit elektrostatischer Haftung’

    Rotho Kunststoff AG
    ./.
    Keter Plastic Ltd.

    Panel of Judges:

      • Dr. Tobias BREMI
      • Dr. Ralph SCHLOSSER
      • Dr. Markus MÜLLER

    Judge-rapporteur:

      • n/a

    Court Clerk:

      • Susanne ANDERHALDEN

    Representative(s) of Plaintiff:

      • Dr. Rudolf RENTSCH (IPrime)
      • Ernst BREM (IPrime)
      • Otto-Martin WILLY (IPrime), assisting in patent matters

    Representative(s) of Defendant:

      • Dr. Simon HOLZER (MLL)
      • Axel STELLBINK (Stellbrink), assisting in patent matters

    ORDER IN FULL

    PATENT IN SUIT

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    The final curtain for the complaint re heavy vehicle charges?

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    Case No. 4A_222/2020 (Supreme Court) | Decision of 16 June 2020 on appeal against O2017_025 | Order of 10 March 2020

    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:

    with order of 10 March 2020, in view of the likelihood of invalidity and because claims for monetary compensation have become invalid anyhow.

    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.

    Reported by Martin WILMING

    BIBLIOGRAPHY

    Case No. 4A_222/2020 (Supreme Court) | Decision of 16 June 2020 on appeal against O2017_025 | Order of 10 March 2020

    n/a (Appellant / Plaintiff)
    ./.
    1. B. GmbH (Defendant)
    2. C. SA (Defendant)
    3. Swiss Confederation (Respondent / Notified Party)

    Panel of Judges:

      • Dr. Christina KISS

    Court Clerk:

      • Dr. Matthias LEEMANN

    Representative(s) of Plaintiff:

      • n/a

    Representative(s) of B. GmbH:

    Representative(s) of C. SA:

      • Dr. Peter K. Neuenschwander (SN&P)

    Representative(s) of the Swiss Confederation:

      • Peter WIDMER (FMP)
      • Dr. Cyrill RIEDER (FMP)

    DECISION OF THE SUPREME COURT
    → appeal against FPC order denying (further) legal aid
    Case no.: 4A_222/2020
    Decision of: 16 June 2020

    ORDER OF THE FPC
    → denying (further) legal aid
    Case no.: O2017_025
    Order of: 10 March 2020
    The order is unpublished. Unfortunately.

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    Premature database entry infringes SPC

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    Case No. S2019_006 | Decision of 1 May 2019
    Case No. S2019_006 | Decision of 21 March 2019

    Lilly / ICOS

    The SPC in suit is ICOS’ C00740668/01, the basic patent of which is EP 740 668 B1; see EPO Register and Swissreg for further information.

    The SPC protects tadalafil (which is also referred to in claim 10 of the basic patent), a phosphodiesterase type 5 (PDE5) inhibitor. Lilly‘s products are Cialis® (for the treatment of erectile dysfunction) and Adcirca® (for the treatment of pulmonary arterial hypertension).

    Lilly’s Cialis and its active ingredient tadalafil

    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’s logo

    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 SolutionsmedINDEX (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.

    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.

    Reported by Martin WILMING

    BIBLIOGRAPHY

    Case No. S2019_006 | Decision of 1 May 2019
    Case No. S2019_006 | Decision of 21 March 2019

    (1) ICOS Corporation
    (2) Eli Lilly (Suisse) SA
    ./.
    Sandoz Pharmaceuticals AG

    Single judge:

    • Dr. Mark SCHWEIZER

    Court Clerk:

    • Susanne ANDERHALDEN

    Representative(s) of ICOS / Eli Lilly:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)
    • Dr. Andrea CARREIRA (Rentsch), assisting in patent matters

    Representative(s) of Sandoz:

    • Dr. Markus WANG (Bär & Karrer)

    FIRST DECISION OF THE FPC
    → injunctive relief granted without hearing the defendant
    Case no.: S2019_006
    Decision of: 21 March 2019
    Fullscreen view (new tab)

    SECOND DECISION OF THE FPC
    → injunctive relief denied after hearing the defendant
    Case no.: S2019_006
    Decision of: 1 May 2019
    Fullscreen view (new tab)

    PATENT IN SUIT

    Fullscreen view (new tab)

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    Fulvestrant, revisited: Is it still urgent? Views are divergent …

    Reading time: 9 minutes

    Case No. S2019_004 | Decision of 9 April 2019
    Case No. S2019_004 | Decision of 20 February 2019

    Sandoz’s logo

    With request of 12 February 2019, AstraZeneca asserted EP(CH) 2 266 573 B1 (see EPO Register and Swissreg for further information) against Sandoz’s generic version of AZ’s Faslodex®, i.e. Fulvestrant Sandoz 250 mg/5ml (Swissmedic approval no. 56778). Note that Sandoz’s generic has been on the market in Switzerland since 26 July 2016.

    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.

    AZ’s logo

    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.

    Fulvestrant (aka ICI 182,780), the active ingredient of AZ's Faslodex®
    Fulvestrant (aka ICI 182,780), the active ingredient of AZ’s Faslodex® and Sandoz’s generic

    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:

    17 Jun 2015 Grant of EP’573
    29 Oct 2015 1st opposition filed (Hexal)
    16 Feb 2016 2nd opposition filed (Actavis)
    8 Mar 2016 3rd opposition filed (Fresenius Kabi)
    16 Mar 2016 4th opposition filed (Intas)
    17 Mar 2016 5th opposition filed (Teva)
    17 Mar 2016 End of EPO opposition period
    21 Mar 2016 Acceleration request by FPC in opposition proceedings
    26 Jul 2016 Sandoz’s market entry
    3 Aug 2016 AZ seeks interim injunctive relief based on another patent, i.e. EP'138; S2016_007, see this Blog here
    30 Nov 2016 Summons (EPO) issued with ED’s preliminary opinion that patent is invalid
    … Mar 2017 Request for interim injunctive relief in case S2016_007 withdrawn
    8 May 2017 EPO first instance decision to revoke EP’573
    29 Aug 2017 FPC’s first instance decision to revoke EP(CH)’573; O2015_011, see this Blog here
    8 May 2018 On appeal re O2015_011, Supreme Court remits the case for re-assessment of obviousness; 4A_541/2017, see this Blog here
    15 Oct 2018 Preparatory notes of EPO BoA indicating that obviousness is tbd in the hearing
    23 Nov 2018 Judge-rapporteur’s expert opinion in O2018_009 (which is the remitted case O2015_011) that EP(CH)’573 is valid
    27 Nov 2018 Gerechtsbank Den Haag holds that EP(NL)'573 is valid and infringed
    24 Jan 2019 EPO BoA pronounces the decision to reject the oppositions / maintain EP’573 at the end of the hearing
    12 Feb 2019 AZ files requests for interim injunctive relief in the present proceedings
    15 Mar 2019 EPO BoA issues reasoned decision

    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.


    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.

    Reported by Martin WILMING

    BIBLIOGRAPHY

    Case No. S2019_004 | Decision of 9 April 2019
    Case No. S2019_004 | Decision of 20 February 2019

    AstraZeneca AB
    ./.
    Sandoz Pharmaceuticals AG

    Single judge:

    • Dr. Rudolf RENTSCH

    Court Clerk:

    • Susanne ANDERHALDEN

    Representative(s) of AstraZeneca:

    • Dr. Michael RITSCHER (MLL)
    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Thorsten BAUSCH (Hoffmann Eitle), assisting in patent matters
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

    Representative(s) of Sandoz:

    FIRST DECISION OF THE FPC
    → no injunctive relief without hearing the defendant
    Case no.: S2019_004
    Decision of: 20 February 2019
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    SECOND DECISION OF THE FPC
    → no injunctive relief at all, after hearing the defendant
    Case no.: S2019_004
    Decision of: 9 April 2019
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    PATENT IN SUIT

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    T 1680/17 – Decision of EPO BoA 3.3.01

    Chairman: A. Lindner
    Member: M. Pregetter
    M. Blasi

    Decision of 24 January 2019:

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    No easy way out

    Case No. O2017_025 ¦ Order of 15 March 2018 ¦ ‘Eintritt der Streitberufenen’

    HEADNOTE

    Art. 79(1) lit. b CPC

    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

    1. intervene in favour of the notifying principal party, without further conditions; or
    2. 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.

    Game of Old Maid

    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

    BIBLIOGRAPHY

    Case No. O2017_025 ¦ Order of 15 March 2018 ¦ ‘Eintritt der Streitberufenen’

    A.

    ./.

    B., C.
    both represented by C.

    EXCERPT OF THE ORDER

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    Act quickly when it’s urgent

    Case No. S2018_002 ¦ Decision of 5 April 2018 ¦ ‘Abweisung superprovisorische Massnahme; fehlende besondere Dringlichkeit’

    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.

    time is running …

    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


    BIBLIOGRAPHY

    Case No. S2018_002 ¦ Decision of 5 April 2018 ¦ ‘Abweisung superprovisorische Massnahme; fehlende besondere Dringlichkeit’

    1. A. AG
    2. B. AG

    ./.

    C. AG

    Judges:

    • Prof. Dr. Daniel KRAUS
    • Dr. Tobias BREMI
    • Prisca VON BALLMOOS

    Judge-rapporteur:

    • Dr. Tobias BREMI

    Court Clerk:

    • Susanne ANDERHALDEN

    Representative(s) of Plaintiff:

    Representative(s) of Defendant:

    DECISION IN FULL

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