Category: Procedural decision

Posted on

Time flies: MSD’s SPC on Cerazette® lapsed before it was held invalid

Case No. O2013_011 ¦ Order of 27 May 2015 ¦ “Gegenstandslosigkeit (Art. 242 ZPO) infolge Ablaufs des ESZ; Kostenfolgen” 

Note that Hepp Wenger Ryffel is involved in this case on behalf of the plaintiff.

This nullity suit pertains to Merck Sharp & Dohme’s patent und relating SPC on the the contraceptive Cerazette®.

Cerazette® (active ingredient: Desogestrelum)
Cerazette® (active ingredient: desogestrelum)

Generally speaking, there are two main kinds of hormone contraceptives: On the one hand, the combined pill, commonloy referred to as ‘the pill’, which contains two types of female sex hormone (an oestrogen and a progestogen). On the other hand, the progestogen-only pill, sometimes referred to as ‘POP’ or ‘mini-pill’, which does not contain an oestrogen. Cerazette®  is such a ‘mini-pill’, marketed in Switzerland by MSD Merck Sharp & Dohme; see compendium.ch for details.

Desogestrel
Desogestrel

Most POPs work primarily by preventing the sperm cells from entering the womb but they do not always prevent the egg cell from ripening, which is the main way that combined pills work. According to the manufacturer, Cerazette® is different from most POPs in having a dose that in most cases prevents the egg cell from ripening, making it a highly effective contraceptive.

In contrast to the combined pill, Cerazette can be used by women who do not tolerate oestrogens and by women who are breast feeding.

The progestogen contained in Cerazette® as the active ingredient is desogestrel. This compound as such was already known at the filing date of the patent in suit. The invention of EP  491 443 B1 pertains to the use of 70 to 80 micrograms of e.g. desogestrel as sole contraceptive. The independent claims cover this concept in different categories and read as follows:

1. A combination and contraceptive kit comprising sequential daily dosage units for oral administration each containing as the sole contraceptively effective ingredient from 70 to 80 micrograms of desogestrel, 3-ketodesogestrel, or mixtures thereof.

5. The use of an oral daily dosage unit consisting essentially of 70 to 80 micrograms of a progestogen selected from the group of progestogens consisting of desogestrel, 3-ketodesogestrel, or mixtures thereof, in the preparation of a drug delivery system, said drug delivery system characterized by consisting of daily dosage units containing only a progestogenic compound as sole therapeutically effective ingredient.

6. A drug delivery system comprising a package containing 26 to 30 daily sequential dosage units consisting essentially of from 70 to 80 micrograms of a compound selected from the group consisting of desogestrel, 3-ketodesogestrel, and mixtures thereof.

7. A contraceptive kit of the type containing progestogen-only daily dosage units, wherein the improvement comprises using from 70 to 80 micrograms of 3-ketodesogestrel, desogestrel, or mixtures thereof as the progestogen in said daily dosage units.

8. A process of manufacturing a drug delivery system comprising:
mixing predetermined quantities of a progestogen selected from the group consisting of desogestrel, 3-ketodesogestrel, and mixtures thereof, with predetermined quantities of excipients and converting the mixture into dosage units each containing 70 to 80 µg of desogestrel, 3-ketodesogestrel, or mixtures thereof, and packaging a plurality of said dosage units into a kit.

The nullity suit had been lodged already on July 12, 2013. The defendant answered on March 6, 2014. A first hearing was held on June 4, 2014; no settlement could be reached. Reply and rejoinder followed on September 2, 2014 and October 22, 2014, respectively. With his rejoinder, the defendant indicated to limit the patent to embodiments with 28 daily doses, as an auxiliary measure. Various submissions of both parties followed, and the parties were then summoned to the main hearing on June 2, 2015.

But the main hearing did not take place anymore, since neither party was interested in it. The reporting judge had provided her assessment on February 6, 2015, and both parties had commented on that assessment in writing. The SPC C00491443/01 (based on EP  491 443 B1 and the market authorization of Cerazette®) finally lapsed on March 27, and the President asked both parties on March 31, 2015 to comment on their remaining legal interest.

Cevanel
Cevanel

The defendant declared that no monetary claims will be raised against the plaintiff for marketing a generic version — Cevanel® — before the SPC had lapsed. Thus, both parties agreed that no legal interest in a decision on nullity remained. Proceedings had become groundless and the case was dismissed; Art. 242 CPC.

As a general principle, the unsucessful party has to bear the costs; Art. 106(1) CPC. However, someone has to pay the bills even if no decision is being taken. According to Art. 107(1) lit e CPC, the FPC may allocate the costs at its own discretion if proceedings are dismissed as groundless. Towards this end, the FPC had nevertheless to assess the probable outcome of the case, in order to allocate the costs.

Novelty was undisputed, but the plaintiff argued for lack of an inventive step essentially over three prior art documents:

In a nutshell, desogestrel had already been used in combined pills. Moreover, it had also been known that desogestrel completely prevents ovulation when given at a dosage of more than 60 microgram/day, and it had been suggested to further pursue desogestrel to be administered as sole contraceptive. And, finally, it had been known that dosages of 125 and 150 microgram/day of desogestrel were well tolerated. The reporting judge thus held that determination of a beneficial dosage of desogestrel within the aforementioned boundaries was just a matter of routine experimentation. Limitation of the claims to embodiments with 28 daily doses did not help, either: POPs with this dosage regime had also been known before.

The defendant objected that the reporting judge had chosen the wrong closest prior art in her assessment of inventive step according to the problem-and-solution approach. Starting from prior art POPs, inventive merit should be acknowledged. However, anything that is obvious having regard to the [whole] state of the art is not patentable as an invention; see Art. 1(2) PatA. With reference to T 967/97 (hn I and II) and BGE 138 III 111 (r 2.2), the FPC emphasized that it is sufficient to show that the person of skill in the art would have arrived at the alleged invention without inventive activity in at least one way.

The finding of lack of an inventive step is in line with a decision on the same European patent and corresponding SPC in Germany; see decision 3 Ni 21/12 of the Federal Patent Court in Germany of May 6, 2014. The Dusseldorf Regional Court had issued a preliminary injunction on November 15, 2012 (4bO 123/12), but the Dusseldorf Higher Regional Court lifted that decision on November 7, 2013, since validity of the patent was doubtful (I-2 U 94/12).

Likewise, the Tribunal de Grande Instance de Paris had also held that the basic patent was invalid inter alia for lack of an inventive step (decision of December 5, 2014).

The FPC thus concluded that the plaintiff would presumably have entirely succeeded and allocated the whole costs on the defendant (party compensation of CHF 114’080,– and court fee of CHF 30’000,–, based on a value in dispute of CHF 500’000,–).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2013_011 ¦ Order of 27 May 2015 ¦ “Gegenstandslosigkeit (Art. 242 ZPO) infolge Ablaufs des ESZ; Kostenfolgen” 

Mepha Pharma AG ./. Merck Sharp & Dohme B.V.

Subject(s):

  • Inventive step
  • Assessment of the reporting judge
  • Court costs
  • Party compensation

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Reporting judge:

  • Dr. Hanny KJELLSAA-BERGER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— DECISION IN FULL —

Download (PDF, 138KB)

— BE ON THE KNOW —

You liked this? And you would like to be notified of new posts? Here you go.

Posted on

Further insight into the requirements for an ex-parte interim injunction

Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”

— THE DECISION IN A NUTSHELL —

If an ex parte interim injunction is requested, the FPC will — to a certain extent — anticipate potential counter-arguments of the defendant ex officio, and evaluate their cogency. Novelty and involvement of an inventive step was not offhandedly assumed for a Swiss patent that is unexamined on the merits, since (i) the IPRP of the underlying PCT application denied novelty; and (ii) counter-arguments of the plaintiff / patentee re novelty and inventive step were not found convincing. Consequently, the interim injunction was not granted ex parte.

— THE DECISION IN MORE DETAIL —

As a general rule, Art. 261(1) CPC provides that a court shall order interim measures required provided the applicant shows credibly that: (a.) a right to which he or she is entitled has been violated or a violation is anticipated; and (b.) the violation threatens to cause not easily reparable harm to the applicant.

While interim measures are regularly dealt with in inter partes proceedings, ex parte interim measures may also be granted according to Art. 265 CPC: In cases of special urgency, and in particular where there is a risk that the enforcement of the measure will be frustrated, the court may order the interim measure immediately and without hearing the opposing party. This is frequently referred to as a super-provisional measure.

Thus, the law provides for such super-provisional measures. And the FPC has already granted a few of them. However, in none of these cases super-provisional injunctive relief was granted. And the present case it not (yet) the one that got away. But it provides further guidance on how the FPC actually deals with such requests.

It is common sense that the court has to examine a request for super-provisional measures circumspectly: The court must not offhandedly infer the credibility of the (qualified) endangering, but rather has to request proof, besides a plausible presentation of the facts (see p. 7536, penultimate para. of the dispatch of the Federal Council on the Civil Procedure Code).

However, what does this mean in patent litigation matters?

The FPC now took the opportunity to further shape the actual requirements in a hands-on example. Let’s have a brief look at the technical matter at stake. Even though it is not explicitly mentioned in the decision, it is clear that CH 708 247 B1 and WO 2013/174738 A1 are at stake. For further bibliographic details, please see Swissreg with regard to the Swiss patent and Patentscope with regard to the PCT application, respectively.

The PCT application had been nationalised in Switzerland and proceeded to grant, but without any examination on the merits (Art. 59(4) PatA). Therefore, the FPC must not offhandedly assume validity of the Swiss patent if ex parte interim measures are requested. Rather, further indication in support of the validity of the Swiss patent is necessary, such as e.g. an official search report or an international preliminary report on patentability (IPRP); see e.g. S2013_005, r. 3. Here, an IPRP was indeed available — but novelty was explicitly denied therein. Note that the claims of the Swiss patent and the PCT application are identical. Of course, the plaintiff did not agree with the findings of the IPRP and presented arguments in support of novelty over all documents cited in the IPRP. However, the FPC concluded that the findings of the IPRP re lack of novelty were prima facie not refuted. But even if the FPC would have followed the plaintiff’s reasoning re novelty, the plaintiff apparently failed to present convincing arguments re inventive step. In this regard, the FPC again reiterated that it is essential to define the person of skill in the art whenever inventive merit is being discussed. Moreover, it has to be shown why the person of skill in the art would not have arrived at the claimed solution, e.g. on the basis of the problem-and-solution approach established in EPO proceedings. The FPC briefly assessed the potential involvement of an inventive step and concluded that obviousness over D1 (EP 2 248 485 A1, in particular Fig. 5, 6 and 8) could not be ruled out by prima facie evidence, in further view of D3 (WO 2011/027229 A2).

My personal take-away message from the decision is the following:

To a certain extent, the court thus has to anticipate potential counter-arguments of the defendant ex officio, and to evaluate their cogency.

Evidently, the hurdle for an ex parte interim injunction is high — but not insurmountable. The FPC explicitly notes what has been missing here:

For an ex parte interim injunction to be granted, and if a negative IPRP has been issued, the FPC needs to be in a position to conclude prima facie and at least on the basis of the plaintiff’s submission that novelty and inventive step is nevertheless given.

This was not the case here. The request for ex parte interim injunctive relief was dismissed and the defendant was given the opportunity to reply.

— WHAT’S UP ON THE MARKET —

Patentees are Martin BÄCHLER and Jürg BÄCHLER, who are members of the board of directors of Valoc AG. In my perception, the retention inserts for the fixation of Valoc’s Novaloc™ matrices are products according to the patent in suit.

retention insert
(retention value: strong)
CH 708 247 B1, Fig. 1
CH 708 247 B1, Fig. 2
CH 708 247 B1, Fig. 3

For more information on this system, please revert to the product brochure and the flyer. To better understand mounting and removal of the retention insert, the following video may help:

There is no indication at all in the decision as to the identity of the defendant.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”

(not identified) ./. (not identified)

Subject(s):

  • Infringement
  • Interim measures without hearing the defendant
  • Dental retention insert

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI
  • Dr. Kurt SUTTER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (n/a)

— FULL TEXT OF THE DECISION —

Download (PDF, 824KB)

Posted on

Infringement of a patent in good faith?

Case No. O2014_012 ¦ Decision of 23 September 2014 ¦ “Beendigung des Verfahrens ohne Entscheid; Kostenfolgen; kein Klageüberfall”

This court order of 23 September 2014 has been published only recently.

The story is quickly told: The plaintiff had sued the defendant for patent infringement. In his answer, the defendant immediately submitted to the requests for injunctive relief. Thus, only the allocation of costs remained to be decided. As a general rule, procedural costs are charged to the unsuccessful party. If no party is entirely successful, costs are allocated in accordance with the outcome of the case; see Art. 106 CPC. In a nutshell, the defendant argued that he had not been aware of the plaintiff’s patents beforehand. The plaintiff should have sent a warning letter before going to court. If he had done so, costs could have been avoided. The defendant thus invoked Art. 107 lit. f CPC and argued that there are “other extraordinary circumstances that would result in an allocation according to the outcome of the case being inequitable.”

The FPC held that the defendant essentially argues to have acted in good faith. Every person must act in good faith in the performance of his obligations; see Art. 2  CC. There is no good faith anymore if one knew, should have known or could have known of the non-conforming legal position. No person may invoke the presumption of good faith if he has failed to exercise the diligence required by the circumstances; see Art. 3(2) CC. Now, what is in fact required by the circumstances? In O2013_007 (r. 4.3), the FPC has already expanded on this issue:

There is no general obligation to conduct investigations — but if one has reason to suspicion, one has to clarify the situation.

In the present case, the defendant is not an end-user but rather a retailer. The FPC held that a retailer must clarify the patent situation if there is a risk of infringement. Such a risk was held to be clearly given in the present case. The plaintiff is apparently a renowned manufacturer typically seeking patent protection. The allegedly infringing products were technically and functionally very similar. Thus, the risk of a patent infringement should have been obvious for the defendant. He could thus not invoke the presumption of good faith and costs were allocated in accordance with the outcome of the case, i.e. the defendant has to bear the costs inasmuch as the requests for injunctive relief are concerned. But the plaintiff had also requested a rather prominent publication of the decision in trade journals in Germany and Switzerland. Later on, this request was withdrawn. Thus, the plaintiff was unsuccessful with this request. At first sight, one might have expected that the requests for injunctive relief were to be weighed higher than the request for publication. But the defendant had only sold two devices (a third one was apparently ordered by the plaintiff), and there was no reason to assume that the business would have extended. On the other hand, the publication in trade-journals would have globally blemished the defendant as a patent infringer.

Concluding, the FPC allocated the costs by half, and no party compensations were awarded.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_012 ¦ Decision of 23 September 2014 ¦ “Beendigung des Verfahrens ohne Entscheid; Kostenfolgen; kein Klageüberfall”

(not identified) ./. (not identified)

Subject(s):

  • Kosten: Parteientschädigung

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Robert BRINER (CMS)
  • Peter STEINEGGER (SBMP), assisting in patent matters

— FULL TEXT OF THE DECISION —

Download (PDF, 67KB)

Posted on

No pleadings under the guise of the unconditional right to reply

Case No. O2013_020 ¦ Decision of 29 October 2014 ¦ “Verfügung des Bundespatentgerichts vom 29. Oktober 2014 ¦ Unbedingtes Replikrecht”

HEADNOTE

Art. 6 EMRK; Art. 29(1) BV:
Upholding the unconditional right to reply does not allow the parties to make submissions that are not yet or no longer permitted under CPC.

Further to the decision in the matter O2013_004, this is yet another landmark decision on the unconditional right to reply. In the present matter, the plaintiff had filed a submission in reply to the rejoinder of the defendant. In turn, the defendant had been invited to reply to the new requests, pieces of evidence and allegations brought forward in that submission of the plaintiff. The FPC had explicitly instructed that only comments on new matter were to be made, and that each and every allegedly new item should be identified.

The defendant filed his reply, but the FPC held that it obviously did not comply with the aforementioned requirements. In his summary, the defendant had not even addressed the prior submission of the plaintiff. Only some parts of the submission dealt with allegedly new subject-matter brought forward by the plaintiff. Other parts evidently dealt with subject-matter that had been on file beforehand (“plaintiff again re-iterates”, “plaintiff keeps insisting”), or were mere free pleading.

Regular written proceedings were concluded with the rejoinder of the defendant, with the exception that the right of the parties to be heard must be complied with. This was what the FPC’s invitation of the defendant to file a reply was all about. The FPC took the opportunity to again expand on the unconditional right to reply. Such right of course exists (cf. BGE 138 I 484, r. 2.1), but the court may nevertheless assess the admissibility of any such reply. Any submission that goes beyond the instructions of the court are inadmissible. Parties are barred from further submissions up to the main hearing (Art. 228 CPC), with due consideration of Art. 229 CPC, i.e. that presentation of new facts and evidence at the main hearing is only admissible if they are so-called proper novae or, at least, improper novae.

Attempts to circumvent these rules of procedure under the guise of a submission that was only meant to safeguard the unconditional right to reply are not appreciated by the FPC. Rather, one runs the risk that any such submission is held inadmissible.

The FPC thus set a non-extendable time limit of only a few days for the defendant to improve his submission in order to comply with the initial instructions of the FPC. Otherwise, the submission would be disregarded in toto.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. O2013_020 ¦ Decision of 29 October 2014 ¦ “Verfügung des Bundespatentgerichts vom 29. Oktober 2014 ¦ Unbedingtes Replikrecht”

(not identified) ./. (not identified)

Subject(s):

  • Nullity

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)
  • Susanne ANDERHALDEN (First Court Clerk)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)

—

Full text of the decision right here:

Download (PDF, 88KB)

Posted on

Security for party costs to be provided at the request of the defendant

Case No. O2013_013 ¦ Order of 10 April 2014 ¦ “Security for party costs”

— THE DECISION IN A NUTSHELL —

The plaintiff had lodged a nullity suit against the Swiss part of a European Patent. On request of the defendant and since the plaintiff is a foreign (U.S.) company, the plaintiff was obliged to provide security for defendant’s costs (Art. 99(1) lit. a CPC).

— THE DECISION IN MORE DETAIL —

This case is a nullity suit against the Swiss part of the European patent EP 1 860 424 B1 pertaining to self-aligning scanning probes for scanning probe microscopes; for further bibliographic details of this patent, see Swissreg.

First, the plaintiff apparently took action against the wrong entity, i.e. a “B. GmbH”. Note that the patentee is NanoWorld AG, identified as “C. AG” in the decision. On request of the plaintiff, this was corrected and the plaintiff was obliged to pay a compensation to the wrongly accused B. GmbH.

The plaintiff had estimated the value in dispute as CHF 40’000,–. Defendant disagreed and rather estimated the value in dispute to CHF 250’000,–. The plaintiff argued that turnover during the past years with such items had been almost neglectable, i.e. CHF 1’400,– to 3’000,– p.a., with an annual profit of only CHF 400,– to 900,–. However, the FPC emphasized that the plaintiff’s turnover is not decisive, but rather the value of the patent as such. In view of the remaining term of the patent of 12 years and the considerable effort of the plaintiff with his nullity suit (about 60 pages and more than 50 exhibits), the FPC was evidently not convinced of the plaintiff’s low estimation but rather followed the request of the defendant: The value in dispute was fixed to CHF 250’000,– (Art. 91(2) CPC). Based thereon, a party compensation of CHF 25’000,– (Art. 5 CostR-PatC) and costs for a patent attorney to be involved of CHF 35’000,– (Art. 9(2), Art. 3 lit. a CostR-PatC) was held reasonable.

Note that the bilateral treaty between Switzerland and the USA provides free access to the courts but does not exempt the foreign party from the obligation to provide a security; see Art. I of SR 0.142.113.361, BGE 121 I 108 r. 2 and BGE 4P.153/2003 r. 2.3.1. Consequently, in addition to the advance payment of (expected) court fees of CHF 12’000,–, the plaintiff was obliged to provide a security for the defendant’s costs. The FPC will not consider the case if this security is not provided in due time.

Noteworthy, an action for declaration of nullity has also been brought before the Federal Patent Court in Germany (5Ni12/14(EP)).

Reported by Martin WILMING

— BIBLIOGRAPHY—

Case No. O2013_013 ¦ Order of 10 April 2014 ¦ “Security for party costs”

(not identified) ./. (not identified)

Subject(s):

  • Nullity
  • Security for party costs

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)

— FULL TEXT OF THE DECISION —

Download (PDF, 84KB)

Posted on

Drospirenone, again: Late filed subsidiary request not considered for lack of factual connection

Case No. O2013_009 ¦ Order of 27 February 2014 ¦ “Nichteintreten; Nichtzulassung der Klageänderung”

The FPC has already issued a landmark decision Drospirenone in summary proceedings last year (S2013_001, mainly dealing with the doctrine of equivalents; see here).

Drospirenone
Drospirenone (DRSP);
click to enlarge

The present matter again pertains to methods of production of drospirenone (DRSP), a compound used in contraceptives (birth control pills). And again the same two European patents are at stake: EP 0 918 791 B3 (hereinafter the ’791 patent; see the European patent register for further details) and EP 1 149 840 B2 (which is a divisional of the ’791 patent; hereinafter the ’840 patent); see the European patent register for further details. Proprietor of both European patents is Bayer Pharma AG, according to Swissreg (cf. here and here).

Technical background

Although the present order does not primarily deal with technical issues, we need to recall the final steps in synthesis of drospirenone (DRSP; click to enlarge) according to the patents in suit:

Final steps in synthesis of drospirenone (DRSP)

The starting molecule is the alkine ZK 34506 which is hydrated to form the compound ZK 92836 (step A). Next, ZK 92836 is oxidised to form the cyclic lactone ZK 90965 (step B). Finally, water is eliminated from ZK 90965 to form the enone DRSP (step C).

In simple terms, claim 1 of EP’791 protects the reaction scheme as outlined above, wherein step B is carried out in the presence of a ruthenium salt as a catalyst. Step A is to be a catalytic hydration. Step C is not specified any further.

On the other hand, the only claim 1 of EP’840 specifically pertains to step C only and requires that dehydration is carried out through addition of p-toluenesulfonic acid.

An amendment of the statement of claim?

In the present matter, the plaintiff’s initial request for permanent injunctive relief only recited the dehydration step C (“dehydration […] by addition of p-toluenesulfonic acid or pyridine/water”). Nevertheless, the writ contained exhaustive arguments for infringement of both EP’791 and EP’840.

In his answer the defendant inter alia alleged nullity of EP’840. The defendant argued that the request only relied on EP’840.

The plaintiff then filed a subsidiary request in his reply. This subsidiary request was resembling the wording of claim 1 of EP’791, but wherein the oxidation in step B is carried out with the catalyst TEMPO. Unsurprisingly, the defendant requested that this request not be considered. Consequently, the defendant’s rejoinder only dealt with (nullity and infringment of) EP’840.

The decision

According to Art. 227 CPC, an amendment of the statement of claim is admissible only if the new or amended claim is subject to the same type of procedure (what was undisputed here) and: (i) a factual connection exists between the new or amended claim and the original claim; or (ii) if the opposing party consents to the amendment of the statement of claim. Since the defendant did not consent to the amendment, only (i) could have been applicable.

In the plaintiff’s view, a close factual connection was given since identical products and the same course of action (“Lebensvorgang”) were at stake. Moreover, both patents belonged to the same patent familiy.

The FPC did not follow any of these arguments but rather emphasized that drospirenone as such is free state of the art. Only specific manufacturing methods are still protected by EP’791 and EP’840 (and drospirenone directly obtained by these methods; Art. 8a PatA). The request as initially filed and the later filed subsidiary request only pertain to the same course of action inasmuch as both concern drospirenone, but this does not yet constitute an infringement. To the contrary, the FPC held that there is no factual connection with respect to EP’791 and EP’840 since they protect different steps that may but need not be carried out in combination. Moreover, if the FPC had accepted the amendment of the statement of the claim, the defendant would have been barred from filing a counterclaim for nullity of EP’791 at this stage of the proceedings (a counterclaim needs to be filed with the answer; Art. 224(1) CPC) even though he had no reason to do so earlier since the initial request evidently only relied on EP’840.

Thus, the FPC decided to not consider the late filed subsidiary request for lack of factual connection with the original claim.

Remarks

In my perception, it is highly likely that the present case is the continuation of S2013_001 in ordinary proceedings: The wording of the preliminary injunction in S2013_001 shows striking similarity with the main request for permanent injunctive relief in the present matter (four Swissmedic registration numbers; reagents identified as p-toluenesulfonic acid or pyridine/water). Moreover, the timeline fits: In S2013_001, the FPC had set a deadline within which the main action had to be filed (07 May 2013); Art. 263 CPC. The present writ was filed on 28 May 2013, i.e. presumably within a term extension of 3 weeks for filing the main action.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. O2013_009 ¦ Order of 27 February 2014 ¦ “Nichteintreten; Nichtzulassung der Klageänderung”

(not identified) ./. (not identified)

Subject(s):

  • Infringement
  • Drospirenone

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President; Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Dr. Roland DUX (Judge)
  • Dr. Thomas LEGLER (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Simon HOLZER (MLL)
  • Gregor S. KÖNIG (KSVR), assisting in patent matters

Representative(s) of Defendant:

—

Full text of the decision right here:

Download (PDF, 111KB)

Posted on

Requests for legal aid and recusal of the President of the FPC dismissed

Case No. S2013_009 ¦ Decision of 29 January 2014 ¦ “Ausstand wegen Vorbefassung”

The plaintiff filed a (so-called) draft of a writ for patent infringement on 08 October 2013, together with a request for legal aid (Art. 117 ff CPC). Moreover, he requested that both permanent judges, Dr. Dieter BRÄNDLE and Dr. Tobias BREMI, were to recuse.

The plaintiff’s rationale of the request for recusal of Dr. Tobias BREMI is not readily apparent from the decision, but since the President of the FPC will have to decide on the request for legal aid as a single judge, there is no legitimate interest in his recusal anyhow (Art. 23(1) lit. c PCA; Art. 59(2) lit. a CPC).

On the other hand, the request for recusal of Dr. Dieter BRÄNDLE was based on his earlier involement in a similar case, as follows:

The plaintiff had already sued the Swiss Confederation and three companies for patent infringement on 08 July 2002 at the Commercial Court of the canton of Zurich. He had also requested legal aid then. This request was dismissed and the plaintiff was obliged to provide a procedural deposit of CHF 800’000,–. The plaintiff then exhausted all remedies and a run through various levels of review began. This first decision was lifted by the Court of Cassation of the canton of Zurich on 19 January 2005 and the case was remitted back to the Commercial Court to take the suit’s chances of success into due consideration (Kass.-Nr. AA040107/U/cap), following a decision of the Supreme Court of 01 July 2004 (4P.129/2004). The defendants filed their answers, and subsequently the parties were summoned to settlement negotiations that took place on 11 January 2007. The parties were served with the opinion of the reporting judge on 05 October 2007. With order of 23 August 2008, the request for legal aid was again dismissed: The reporting judge (not Dr. Dieter BRÄNDLE) concluded that the invoked patents were not valid for lack of an inventive step. The plaintiff did not come up with any promising claim amendment that could have resulted in valid claims. Thus, the request for legal aid was dismissed and the Commercial Court fixed the procedural deposit to CHF 1.1m (HG020259); Dr. Dieter BRÄNDLE was acting as substitute chief justice (Ersatzoberrichter) / rapporteur (Instruktionrichter) in this matter at the Commercial Court Zurich. The Court of Cassation dismissed the plaintiff’s nullity appeal with decision of 03 March 2010 (Kass.-Nr. AA080152/U/mum). An appeal of the plaintiff against this decision was dismissed by the Supreme Court on 10 January 2011 (4A_189/2010). A subsequent request for review was dismissed by the Supreme Court on 21 March 2011, either (4F_4/2011). The plaintiff then did not provide the procedural deposit and the Commercial Court Zurich consequently did not consider the case. A court fee of CHF 250’000,– and compensation of the counterparties of (in total) CHF 600’000,– was imposed on the plaintiff. The plaintiff’s appeal against this decision was not considered by the Supreme Court (4A_377/2011; decision of 11 October 2011). Further requests for review were dismissed / written off by the Supreme Court (4F_11/2013 and 4F_12/2013; 4F_1/2014).

From the aforementioned decisions and the patents identified therein, it is evident that the plaintiff is Jean-Jacques WAGNER; the writ of 2002 was based on EP 660 960 B1 and CH 687 352 H1 (no pdf available). A partial surrender of the European patent was published on 31 July 2013 as CH/EP 0 660 960 H3. Initially granted and published as CH 687 352 A5 on 15 November 1996, two declarations of partial surrender of the national Swiss patent were published later on: CH 687 352 C1 (published 15 May 2001); CH 687 352 C9 (published 13 July 2001), a correction of the aformentioned C1 document; and CH 687 352 C3 (published on 31 July 2013). Note that the Swiss national patent has already lapsed on 06 September 2012 (see Swissreg) and the European patent lapsed on 06 September 2013 (see Swissreg). The patents pertain to a

Process and device for detecting, recording and selectively evaluating operational and/or drinving data of a vehicle.

In general terms, the plaintiff alleged that these patents were infringed by the method and system carried out / installed in Switzerland for collecting the heavy vehicle charges. The Federal Department of Finance published a press release already back in the year 2000 when this patent dispute came up for the first time. An annotated version of this press release with comments of Jean-Jacques WAGNER is also available online.

The decision of the Administrative Board of Judges

It is up to a plenum of the Administrative Board of Judges to decide on requests for recusal (Art. 4(3) PR-PatC). In view of the request for recusal, the Adminstrative Board of Judges was established in accordance with Art. 4 PR-PatC.

Art. 28 PatCA is not applicable in the present matter, since the request for recusal pertains to permanent judges. Instead, Art. 27 PatCA in conjunction with Art. 47 ff. CPC applies. Lead decisions of the Supreme Court with respect to the potential appearance of bias are inter alia 2C_219/2013 (r. 2.1), 4A_142/2013 (r. 2.1.2), 4F_11/2013 (r. 1) and BGE 139 III 120 (r. 3.2.1, S. 124).

The decision is clear-cut:

As set forth explicitly in Art. 47(2) lit. a CPC, involvement in a decision on legal aid is in itself no reason for recusal. No supporting indications of a potential appearance of bias could be identified, either: Inasmuch as the grounds for a potential appearance of bias pertain to the prior proceedings outlined above, the plaintiff should have relied on those grounds already in that case. The present proceedings are no (further) appeal stage for the prior case. Moreover, it is no ground for recusal that the plaintiff is not satisfied with the outcome of the earlier proceedings.

[…] führt er Rügen an, die er im Rechtsmittelverfahren hätte vorbringen müssen. Der Umstand, dass dem Kläger der Verlauf und das Ergebnis eines solchen Verfahrens nicht genehm ist, bildet für sich allein keinen Grund für den Ausstand einer Gerichtsperson, die in jenem Verfahren mitgewirkt hat.

Moreover, the subject-matter has obviously changed; this is also acknowledged by the plaintiff: The patents have been partially surrendered in the meantime, and the plaintiff pre-announced to come up with even further limitations.

Consequently, the Administrative Board of Judges dismissed the request for recusal of Dr. Dieter BRÄNDLE. The request for legal aid was also dismissed since the requests on the merits of the case seem devoid of any chances of success (Art. 117 lit. b CPC), with reference to the prior decision 4F_11/2013 and 4F_12/2013 (r. 5) of the Supreme Court. A decision on the costs will be taken together with the final decision on the merits.

Of course, this decision is appealable to the Supreme Court: Play it again, Sam?

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. S2013_009 ¦ Decision of 29 January 2014 ¦ “Ausstand wegen Vorbefassung”

(not identified) ./. (not identified)

Subject(s):

  • Infringement / Recusal

Composition of the Administrative Board of Judges:

  • Frank SCHNYDER
  • Dr. Thomas LEGLER
  • Dr. Ralph SCHLOSSER
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant(s):

  • (not identified)

—

Full text of the decision right here:

Download (PDF, 34KB)

Posted on

Decision of the Supreme Court on recusal of a non-permanent judge

Case No. (not identified) ¦ Decision of 13 February 2013 (FPC, unpublished)
Case No. 4A_142/2013 ¦ Decision of 27 August 2013 (Supreme Court) ¦ “Ablehnungsbegehren”

For the sake of good order, please note that colleagues of the authors at Hepp Wenger Ryffel are advising and representing clients in the field of the subject matter at stake.

Expectedly, the ongoing legal disputes on coffee capsules have reached the FPC — and the Supreme Court. The following patents are in suit:

However, the present decision of the Supreme Court does not pertain to the merits of the case yet; it only clarifies a question of recusal of a member of the board of the FPC.

Linizo Lungo Capsule (© Nestlé Nespresso SA)
Linizo Lungo capsule (illustrative)
© Nestlé Nespresso SA

The potential appearance of bias of judges is undoubtedly a matter of an ongoing debate amongst practitioners. How comes, you ask? Well, the FPC has been set up with only two permanent judges which are supported by a pool of 36 non-permanent judges (11 with a background in law, 25 with a technical background). Most of the non-permanent judges are attorneys-at-law and patent attorneys, either in private practise or in industry. A non-permanent judge in one case may also act as representative / assisting in patent matters in other cases. Evidently, there are pros and cons of this setup: On the one hand, this makes a lot of technical and legal competence available for the FPC to recruit for a specific case. Mostly, the FPC is thus in a position to handle cases without costly and time-consuming court opinions to be obtained from external experts. On the other hand, it is an intrinsic risk that judges might need to recuse in view of a conflict of interests. Of course, it must not be forgotten that the judges have sworn an oath (or taken a vow) pertaining to fulfilling their duties conscientiously; cf. Art. 15 PatCA. Nevertheless, it was only a matter of time that case-law would figure out the boundaries.

1.  Factual situation

In the present matter, the parties had already been summoned to an oral hearing when they were informed by the president that TSWpat, i.e. the firm of the non-permanent judge Peter RIGLING who was appointed reporting judge in the present matter, meanwhile represents a sister company of one of the defendants in the prosecution of a single trademark application in Switzerland. The president of the FPC had informed the parties that this did not constitute a ground of recusal in the sense of Art. 3 or 4 of the Guidelines on Independence. However, the plaintiffs requested that judge Peter RIGLING shall recuse himself or shall be recused ex officio.

The relationship of parties and persons involved in the present matter is summarized in the following chart (and will become even clearer hereinbelow). The parties to the proceedings are boxed in red; connected undertakings to parties to the proceedings are boxed in green; click image to enlarge:

parties

2.  What was argued

Judge Peter RIGLING outlined in writing, why — in his point of view — there was no reason for him to recuse. First, the affiliated (sister) company is not a party to the present proceedings. Moreover, the subject-matter of the present proceedings has no points of contact with the trademark prosecution handled by his firm. Finally, the trademark matter handled by his firm is not associated with significant income.

Defendants refrained from providing any comments.

Plaintiffs argued that defendant Denner belongs to the Migros group of companies, as well as the applicant of the trademark application handled by the firm of judge Peter RIGLING. Not only Denner, but also Migros sells coffee capsules which are compatible with Nespresso® machines. Consequently, the plaintiffs had sued Migros for patent infringement, too. These proceedings are also pending (no publications on this parallel case are available to date). In both cases, inter alia the interpretation and infringement of one and the same patent is at stake (EP 1 646 305 B1; cf. the EPO Patent Register and Swissreg for more details). To the extent of these similarities, the outcome of the present case will prejudice the proceedings against Migros, in the plaintiffs’ view.

Plaintiffs further argued that Migros is not only proprietor of Denner, but also handles Denner’s intellectual property matters, such as e.g. the administration of trademarks. Plaintiffs also presumed that a representative of Migros would have taken part in the oral hearing. At that time, the parties had already informed the FPC by Email about the persons attending the scheduled hearing, but the FPC did not share this information with the respective other parties.

3.  Decision of the FPC

By now, the decision of the FPC is not published. From citations contained in the (surprisingly unredacted) decision of the Supreme Court, the following conclusions can be drawn with respect to the reasoning of the underlying decision of the FPC.

The FPC relied on Art. 28 PatCA (considering it as lex specialis to Art. 47 CPC). According to this provision, a judge has to recuse in proceedings where a member of the judge’s law firm or patent law firm or employer represents one of the parties. This is not the case here, since Migros France is not a party to the present proceedings.  With reference to Art. 47 CPC, the FPC held that there are no special circumstances that might point to a potential bias of the objected judge. The whole setup of the FPC hinges on the assumption that the non-permanent judges are not led by considerations like those brought forward by the plaintiff; there is thus no room left for speculations in this respect.

Das System des Bundespatentgerichts […] stehe und falle mit der Annahme, dass die nebenamtlichen Richter sich nicht von solchen Überlegungen leiten liessen. Für Vermutungen in der von den Klägerinnen geäusserten Art bestehe deshalb kein Raum, […].

The FPC thus dismissed the plaintiffs’ request for recusal of judge Peter RIGLING.

4.  Decision of the Supreme Court

First, the Supreme Court emphasizes that any person whose case falls to be judicially decided has the right to have the case heard by a legally constituted, competent, independent and impartial court (Art. 30(1) Federal Constitution of the Swiss Confederation). This constitutional guarantee cannot justify a differentiation between permanent and non-permanent judges involved (r. 2.1.3).

An appearance of bias of a judge may not only arise when a judge represents or has recently represented a party to the proceedings, but also in case of representation of a counterparty of a party to the proceedings at stake (cf. BGE 135 I 14, r. 4.1-4.3, confirmed in BGE 138 I 406, r. 5.3-5.4; BGE 139 III 120, r. 3.2.1); see r. 2.1.4.

The same reasoning holds true when not the objected judge himself but rather a colleague of the same law firm is engaged in either one of the attorney-client relationships outlined above (cf. r. 2.1.5 with further reference to BGE 138 I 406, r. 5.3 and 4A_256/2010, r. 2.5).

The situation can get (and got here!) even more complicated when connected undertakings are involved. The Supreme Court explicitly holds that a schematic approach in the assessment of an appearance of bias is not applicable in such cases (r. 2.1.6).

Angesichts der Vielfalt möglicher Verbindungen zwischen verschiedenen Gesellschaften wäre ein streng schematisches Vorgehen verfehlt: Weder kann ohne Weiteres von der Befangenheit des nebenamtlichen Richters ausgegangen werden, wenn ein offenes Mandatsverhältnis zu einer mit der Prozesspartei irgendwie verbundenen Konzerngesellschaft besteht, noch wäre es im Hinblick auf den massgebenden Gesichtspunkt des Anscheins der Befangenheit bei objektiver Betrachtung angebracht, unbesehen der Konzernwirklichkeit ausschliesslich auf die rechtliche Unabhängigkeit der Verfahrenspartei abzustellen.

It rather depends on the actual circumstances. It needs to be individually assessed whether the indirect relationship (via a connected undertaking) is too close, i.e. comparable to a direct relationship:

Vielmehr ist unter Berücksichtigung der konkreten Umstände zu beurteilen, ob das offene Mandatsverhältnis zwischen dem nebenamtlichen Richter bzw. seiner Kanzlei und einer Konzerngesellschaft mit einer vergleichbaren Nähe zur mit dieser verbundenen Verfahrenspartei einhergeht.

In this respect, it is irrelevant whether such assessment is cumbersome or not.

Entgegen dem, was die Vorinstanz anzunehmen scheint, können praktische Schwierigkeiten bei der Beurteilung von Ausstandsgründen oder der damit verbundene Aufwand nicht dazu führen, bestimmte Beziehungen – wie etwa ein Mandatsverhältnis zu einer verbundenen Gesellschaft – bei der Beurteilung von Ausstandsgründen einfach auszublenden.

Moreover, the Supreme Court holds that Art. 28 PatCA is not a lex specialis to the CPC in a general sense. Art. 28 PatCA explicitly deals with the situation where a member of the judge’s law firm or patent law firm or employer represents one of the parties. This was not the case here. There is no room for an argumentum e contrario based on Art. 28 PatCA, i.e. that only the specific situation governed by Art. 28 PatCA might constitute a reason of recusal; cf. r. 2.2.

Finally, the Supreme Court states that the plaintiff had the right to consult the case files and to obtain copies thereof; cf. Art. 53(2) CPC. This also pertains to the Email communication prior to the scheduled hearing (cf. Section 2, above). Apparently, there is no conflict with overriding public or private interests. In the said Email, the head of the legal department of the Migros-Genossenschafts-Bund (MGB) was announced to be present at the hearing, with authorization of Denner AG. The Supreme Court thus holds that it was evident for the judges that Migros has an immediate interest in the outcome of the present proceedings. Consequently, it cannot be decisive whether Migros itself is formally party to the proceedings or not.

Aus dem fraglichen E-Mail vom 25. September 2012 geht hervor, dass auf Seiten der Beschwerdegegnerinnen die Leiterin Rechtsabteilung des Migros-Genossenschafts-Bunds an der vom Bundespatentgericht angesetzten Instruktionsverhandlung mit Vollmacht der Denner AG teilgenommen hätte. Der Migros-Genossenschafts-Bund ist demnach am Ausgang des vorliegenden Patentverletzungsverfahrens – für die Richter erkennbar – unmittelbar interessiert, womit es für die Beurteilung des Ausstandsbegehrens nicht darauf ankommen kann, ob er selbst oder seine Tochtergesellschaft Denner AG formell Verfahrenspartei ist.

Consequently, the Supreme Court approved the appeal and decided to recuse judge Peter RIGLING.

Reported by Martin WILMING and Thorsten MÜLL

—

BIBLIOGRAPHY

Case No. (not identified) ¦ Decision of 13 February 2013 (FPC, unpublished)
Case No. 4A_142/2013 ¦ Decision of 27 August 2013 (Supreme Court) ¦ “Ablehnungsbegehren”

(1.) Société des Produits Nestlé SA
(2.) Nestec SA
(3.) Nestlé Nespresso SA

./.

(1.) Denner AG
(2.) Alice Allison SA

Subject(s):

  • Patent infringement / Recusal

Composition of the Board of the FPC:

  • (not identified)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Dr. iur. Thierry CALAME (Lenz & Stähelin)

—

Full text of the decision of the Supreme Court right here:

Download (PDF, 227KB)

Posted on

Beware of missing the right time for submitting evidence

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

1. Background of the case

The parties are anonymised in the present decision (B. GmbH ./. Z. SA). However, the underlying patent is identified (WO 2005/018848).

From a brief review of the patent family, the parties become immediately apparent. In the European phase of the aforementioned PCT application, proceedings are stayed on request of Benteler Automobiltechnik GmbH. This company had sued Z.A.T. Zinc Anticorrosion Technologies SA for partial assignment to co-ownership of the patent application in suit. The writ of 09 February 2009 is available online; it was annexed to the request for interruption of proceedings.

Note that the former applicant of WO 2005/018848 (DaimlerChrysler) had assigned the application to Z.A.T. Zinc Anticorrosion Technologies SA.

For more infomation, please check the file wrapper (online at the EPO).

2. Procedural aspects at stake

Ordinary exchange of written submissions was as follows (submissions with respect to the counterclaim are underlined):

Plaintiff Defendant
i) Writ
(09 February 2009)
ii) Answer ¦ Counterclaim
(29 May 2009)
iii) Reply ¦ Answer
iv) Rejoinder ¦ Reply
(28 February 2013)
v) Rejoinder*
(13 May 2013)

* expressly only commenting on the reply of the defendant of 28 February 2013.

With letter of 14 May 2013, the FPC informed the parties that the exchange of written submissions was finished. However, with letter of 23 May 2013 the plaintiff then expressed his surprise that he was given no further opportunity to comment on facts and evidence raised by the defendant in the rejoinder of 28 February 2013. In the plaintiff’s view, the defendant had denied the plaintiff’s right of action in the rejoinder of 28 February 2013 for the first time. “For the sake of completeness”, the plaintiff submitted assignment agreements signed by the respective inventors back in 2009. Note that the plaintiff had already named these inventors in the writ of 09 February 2009 (marg. no. 17 of the writ). The defendant requested that this submission of the plaintiff be held formally inadmissible; moreover, correctness on the merits was also denied.

First, the FPC held that the plaintiff’s submission of 23 May 2013 was no submission of new facts or evidence in the sense of Art. 229(1) lit. a or b CPC. In contrast, the plaintiff’s intention was obviously to comment on an aspect of the rejoinder of 28 February 2013.

With respect to the initial writ, the ordinary exchange of written submissions was concluded with the rejoinder of 28 February 2013. Only the rejoinder in the counteraction was outstanding, and the FPC accordingly had only set a time limit for this rejoinder. Nevertheless, the plaintiff had the mandatory right to also comment on the rejoinder of 28 February 2013 (“unbedingtes Replikrecht”); no time limit needs to be set by the Court (cf. BGE 138 III 252, r. 2.2; BGE 133 I 98, r. 2.2 and a memorandum of the Supreme Court). However, one has to act immediately in order to safeguard this right. Otherwise, it is deemed that the respective party has abstained from making a further submission. In the present matter, 2 ½ months had lapsed since the plaintiff was served with the rejoinder of the defendant. The FPC held that this was clearly not an immediate action being taken by the plaintiff. Consequently, the FPC excluded the plaintiff’s submission of  23 May 2013 (incl. the assignment agreements) from further consideration, as well as the defendants comments thereon.

As a sidenote, the FPC held that even an immediate comment on the rejoinder of 28 February 2013 would not have helped the plaintiff: The right in the invention had already been discussed in the writ of 09 Februar 2009, and the inventors were already named at that time. The defendant had contested these allegations already in his answer of 29 May 2009. Therefore, this was not a new issue raised only in the rejoinder of 28 February 2013 by the defendant.

Next, the parties will be summoned to the main hearing. The FPC stressed that the parties will then only be allowed to present new facts or evidence in the sense of Art. 229(1) CPC. In view of the above, the plaintiff will thus not be heard anymore with respect to the facts and evidence raised in his submission of 23 May 2013.

Reported by Martin Wilming

—

BIBLIOGRAPHY

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

Benteler Automobiltechnik GmbH ./. Z.A.T. Zinc Anticorrosion Technologies SA

Subject(s):

  • Patent law / Unfair competition

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

—

Full text of the decision right here:

Download (PDF, 20KB)

 

Posted on

Costly showdown of a case with a history

Case No. O2012_013 ¦ Order of 29 May 2013 ¦ “Abschreibungsverfügung nach Klagerückzug”

This case pertains to a composition for the treatment of fungal nail infection. The FPC issued a dismissal order after the plaintiff had withdrawn the suit. The allegedly infringing product was a precision applicator available on the market under the brand Excilor®; cf. website screenshot below for illustrative purposes.

http://www.excilor.com/CorporateEN/ (Screenshot 15 June 2013)
http://www.excilor.com/CorporateEN/
(Screenshot 15 June 2013)

The competing product Nailner® is apparently authorized by the plaintiff. The timeline of the case is as follows:

  • On 11 February 2011, the plaintiff had filed the suit (still with the Commercial Court of the canton of Zurich; case HG110024-O). The three defendants provided their answers on 10 May 2011. Reply and rejoinder were filed on 30 August 2011 and 07 November 2011, respectively.
  • On 11 January 2012, the case was transferred to the FPC. A preparatory hearing was conducted on 07 December 2012, and  the parties were provided with the assessment of the reporting judge Dr. Tobias BREMI on 10 December 2012. The parties provided their written comments in due time.
  • Next, the parties were summoned for the main hearing on 25 April 2013.

Nothing out of the ordinary this far. But on 24 April 2013, i.e. only one day prior to the main hearing, the plaintiff had withdrawn the suit. Consequently, the hearing was cancelled (cf. the list of public hearings on this Blog here). Thus, we will not see any decision on the merits anymore. But what about the costs? According to Art. 106 CPC, the costs are charged to the unsuccessful party. If an action is withdrawn, the plaintiff is deemed to be the unsuccessful party. However, the court may diverge from the general principles of allocation and allocate the costs at its own discretion if a party was caused to litigate in good faith (Art. 107 lit. b CPC); or if there are other extraordinary circumstances that would result in an allocation according to the outcome of the case being inequitable (Art. 107 lit. f CPC). Based on these provisions, the plaintiff requested an allocation of costs with a share of 2/3 (plaintiff) to 1/3 (defendants). In brief, the plaintiff argued that prior to the filing of the lawsuit he had not been aware of any issues with respect to the following:

  1. (lack of) right of action;
  2. (lack of) validity of the patent in suit; and
  3. (lack of) infringement of the patent in suit.

The FPC shot this down harshly:

This allegation is against plaintiff’s better knowledge. The defendants had already asserted these issues in prior summary proceedings at the Commercial Court Zurich (HE100006; decided on 11 February 2011). The plaintiff was thus well aware of these issues at that time when the action was brought.

This seems worth being looked at in more detail. The decision of the Commercial Court Zurich in prior summary proceedings was appealed to the Supreme Court; the decision in appeal proceedings is published as 4A_142/2011. Even though the publication number of the patent in suit is not identified in the former decision of the Supreme Court, the wording of the independent claim 1 is literally reproduced. It reads as follows:

Topical application products free of water and film- and lacquer-forming additives for the treatment of onychomycoses and nail care containing
a) one or more active substances
b) one or more C1-C4-alkyl esters of lactic acid, malic acid, tartaric acid or citric acid as carriers and
c) optionally physiologically compatible adjuvants.

A simple Google search of the claim wording reveals the patent in suit: EP 1 143 950 B1. The complete file wrapper is available directly at the EPO. Now, with this information at hand, let’s have a closer look at the three issues (right of action; validity; infringement):

(Lack of) Right of Action

Lack of right of action was not an issue in the decision 4A_142/2011 of the Supreme Court. Apparently, the Commercial Court ZH rejected the request for preliminary injunctive relief already for reasons of lack of prima facie evidence of infringement (see below). However, the issue of lack of right of action may well have been raised by the defendants in summary proceedings as a plea in objection.

BioEqual AG is indicated as patentee in both the European Patent Register and Swissreg. However, from the file wrapper one may well guess that factual ownership might be complicated. BioEqual AG was entered into the European Patent Register as owner with effect as of 22 July 2004; cf. EPO Form 2544 of 12 August 2004. This transfer of ownership was registered on the basis of a declaration of transfer of ownership from IPR-Institute for Pharmaceutical Research AG (in liquidation) to BioEqual AG of 03 June 2004. However, yet another declaration of transfer of ownership is on file which is dated earlier. According to this declaration, IPR-Institute for Pharmaceutical Research AG had already transferred ownership to Dr. Tobias A. THOMMEN by contract of 15 May 2002. Factual ownership of BioEqual AG might thus be doubtful.

(Lack of) Validity of the Patent in Suit

Apparently, a negative limitation (disclaimer) to the wording of claim 1 of the patent in suit was introduced during prosecution, i.e. the feature

free of […] film- and lacquer-forming additives

This amendment was carried out already in the proceedings of international preliminary examination; cf letter of 29 November 2000. Allowability of this initially undisclosed disclaimer might be doubtful in view of the decision G 1/03 of the Enlarged Board of Appeal of the EPO.

(Lack of) Infringement

Apparently, the water content of the allegedly infringing product was already the technical key aspect of the earlier decision 4A_142/2011 of the Supreme Court. Literally, claim 1 of the patent in suit requires the absence of water. Already at that time, it was beyond dispute that the allegedly infringing product contained 2% of water. From the requests of the plaintiff, it becomes clear that the allegedly infringing products still contained water (“not more than 4%”; “with a water content of 2% or 4.7 to 7%, respectively”). These amounts of water might have established the lack of infringement. Moreover, the allegedly infringing composition seemingly comprises a “film-forming agent” (see below) — contrary to the wording of the disclaimer introduced into the independent claim 1 of the patent in suit, as outlined above.

http://www.excilor.com/CorporateEN/styletprecision.html (Partial screenshot 15 June 2013)
http://www.excilor.com/CorporateEN/styletprecision.html
(Partial screenshot 15 June 2013)
The cheque, please …

In view of the foregoing, the FPC did not see any reason to deviate from the general principle of Art. 106 CPC and charged the costs to the plaintiff.

The plaintiff himself had estimated the value in dispute to about CHF 1’700’000,–. Based thereon and in accordance with Art. 1 CostR-PatC, the court fee was fixed to CHF 70’000,–. Court fees of the Commercial Court ZH were fixed to CHF 2’000,–.

All three defendants defended their own case; their costs were compensated independently from each other. In accordance with Art. 3 lit. b in connection with Art. 4 and 5 CostR-PatC, a compensation of about CHF 80’000,– was held reasonable by the FPC. De facto, the costs of defendants (1.) and (3.) were in this range and were fully awarded. Costs of defandant (2.) were much higher, but only CHF 85’000,– were awarded.

Costs for patent attorneys in an advisory capacity were claimed as necessary expenses by defendants (2.) and (3.), according to Art. 3 lit a in connection with Art. 9(2) CostR-PatC. These costs were held reasonable by the FPC and were thus awarded in full.

Including some further, yet minor expenses — this is the bill:

  
  70'000,-- CHF   Court fees of the FPC

   2'000,-- CHF   Court fees of the Commercial Court ZH (HG110024-O)

                  -----------------------------------------------------------

                  Defendant (1.), Doetsch Grether AG:

  81'513,40 CHF   Compensation for legal representation 
                  (incl. fees for 228,95h à CHF 320,--; awarded as requested)

                  -----------------------------------------------------------

                  Defendant (2.), Oystershell NV:

  85'000,-- CHF   Compensation for legal representation
                  (requested: fees for 290h à CHF 700,--; sharply reduced)

  59'830,-- CHF   Compensation for patent attorney
                  (Schaad, Balass, Menzl & Partner AG; awarded as requested)

     418,-- CHF   Expenses (awarded as requested)

   2'095,80 EUR   Expenses (awarded as requested)

                  -----------------------------------------------------------

                  Defendant (3.), JeCare SA:

  78'795,-- CHF   Compensation for legal representation 
                  (incl. fees for 170h à CHF 400,--; awarded as requested)

   4'271,-- CHF   Compensation for patent attorney
                  (E. Blum & Co. AG; awarded as requested)

     940,30 CHF   Expenses (awarded as requested)

   1'653,80 EUR   Expenses (awarded as requested)

 ----------------------------------------------------------------------------

 382'767,70 CHF
+  4'499,52 EUR
 ==============

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. O2012_013 ¦ Order of 29 May 2013 ¦ “Abschreibungsverfügung nach Klagerückzug”

BioEqual AG
./.
(1.) Doetsch Grether AG, CH-4002 Basel
(2.) Oystershell NV, BE-9031 Drongen
(3.) JeCare SA, BE-1420 Braine-l’Alleud

Subject(s):

  • Patent Infringement

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

—

Full text of the decision right here:

Download (PDF, 98KB)

Posted on

(Only) Preservation of the existing state of affairs ordered – for the time being

Case No. S2013_005 ¦ Decision of 24 May 2013 ¦ “Description selon Art. 77 LBI”

On 30 April 2013, the claimant requested interim measures of precise description; cf. Art. 77(1) lit. b of the Federal Act on Invention Patents. This is frequently referred to as saisie helvétique (for more details on this possibility in general, see this Blog here (item 6)). Moreover, the claimant requested such interim measures being ordered without prior hearing of the defendant, in order to prevent the defendant from any intentional modification of the allegedly infringing method or the computer/software controlling it.

This far-reaching request failed for several reasons.

First, the claimant only invoked a national Swiss patent. Note, that Swiss patents are not examined for novelty and inventive merit; cf. Art. 59(4) of the Federal Act on Invention Patents. Right from the outset, it is thus questionable whether the presumption of validity of a Swiss patent also extends to novelty and inventive merit; cf. BGE 4C.403/2005, r. 4.3 (Citalopram). Moreover, a court is obliged to examine requests for interim measures without prior hearing of the defendant very carefully; cf. the dispatch of the Swiss Federal Council (p. 7356, 2nd but last para.) of 28 June 2006 on Art. 261 of the Civil Procedure Code. Thus, a court must not rely on allegations with levity, but requires documentary evidence in support of any such allegation. With respect to a Swiss patent, this could have been e.g. a (positive) search report for the Swiss or any corresponding patent application within the same patent family. However, the claimant did not even undertake any attempt to furnish prima facie evidence of validity of the patent. Thus, the FPC had no reason to assume validity of the patent in suit.

Quite to the contrary, the validity of the patent was indeed doubtful. The patent application was filed only on 10 October 2012, claiming a priority of 28 Juin 2012; the patent was granted on 25 April 2013.1 The claimant conceded that the invention had been in use for at least ten years prior to the filing date of the patent in suit, by various undertakings. Moreover, products manufactured according to the now patented method had been sold long before the patent application was filed. No prima facie evidence of confidentiality obligations or factual secrecy was presented.

The FPC was not even in a position to rule out that the defendant’s alleged use of the patented method was lawful, in view of some cross-ownership issues: Apparently, the defendant was co-founded and partially owned until 2010 by a person having been involved in granting the claimant a right to use the invoked invention at that time when no patent protection was yet sought for. Even though the defendant later on changed its name, the purpose of the company remained essentially the same as those of the claimant. The FPC could thus not exclude without further prima facie evidence that the defendant is in fact authorized to use the method according to the patent in suit.

Concluding, the FPC held that both the validity of the patent in suit and the non-existence of a right to use for the defendant are doubtful, for the time being. An abuse of the harsh measure of a precise description cannot yet be excluded without prior hearing of the defendant. However, if the defendant would be notified of the interest of the claimant in the precise description without any measure being ordered by the FPC at all, he would not be hindered from modifying the allegedly infringing method. Any subsequent request for a precise description would then have no impact anymore.

In order to safeguard the legitimate interests of both parties, the FPC chose to uphold a certain element of surprise. According to the principle “in maiore inest minus”, preservation of the existing state of affairs at the premises of the defendant was ordered (cf. Art. 77(1) lit. a of the Federal Act on Invention Patents), pending further court order. The order was issued under the threat of the criminal penalty for non-compliance; Art. 292 Criminal Code. The defendant was also given the opportunity to comment on the allegations in writing; cf. Art. 253 CPC.

This case is to be continued: Upon receipt of the answer of the defendant, the FPC will decide whether – and, if so, how and to which extent – a precise description according to Art. 77(1) lit. b of the Federal Act on Invention Patents is to be ordered.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. S2013_005 ¦ Decision of 24 May 2013 ¦ “Description selon Art. 77 LBI”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures with/without hearing the defendant; description

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (not identified)

—

1 The date of grant appears to be mistyped. According to Swissreg, no Swiss national patent has been granted at all on 25 April 2013.

—

Full text of the decision right here:

Download (PDF, 20KB)

Posted on

Snatching the conduct of the case away from the court

Case No. O2012_039 ¦ Decision of 21 May 2013 ¦ “Auszug aus der Verfügung betr. Prozessleitung”

—

HEADNOTE

Art. 124(1) CPC:
The court is the director of the proceedings. The parties are not allowed to make submissions contrary to an order of the court.
(Non-official translation from German into English language)

—

A platitude, you think? Let’s have a look at this case:

The plaintiff filed an action for patent infringement on 31 July 2012, based on two European patents. The defendant filed his statement of defence on 02 November 2012, denying infringement of both patents. Moreover, both the defendant and a notified third party (cf. Art. 78 ff. CPC) also argued for nullity of one of the patents in suit by way of a plea in objection.

With order of 07 February 2013, the FPC required the plaintiff to file the reply. However, it was explicitly held that the reply had to be restricted to the alleged nullity, for the time being. The plaintiff provided an accordingly limited reply in due time. A preparatory hearing was scheduled for 24 May 2013.

Shortly before the preparatory hearing, the plaintiff filed yet another submission. First, the persons attending the preparatory hearing on behalf of the plaintiff were indicated. Next, the plaintiff briefly – but nevertheless on eight pages – replied on the non-infringement arguments brought forward by the defendant in his statement of defence. In addition, the plaintiff put a supportive private expert opinion on file. The plaintiff justified this submission essentially as follows:

In order to provide a sound basis for the settlement negotiations, the plaintiff feels that it is necessary already prior to the preparatory hearing to briefly apprise the court and the counterparty of the plaintiff’s arguments pertaining to the alleged non-infringement. The plaintiff will elaborate these arguments further when being given the formal opportunity to do so.

Between the lines, one can catch a glimpse of how this must have irked the court. For the preparatory hearing in accordance with Art. 8(4) lit. b of the Guidelines on Proceedings before the FPC, it was the intention of the court to have one reply of each party on file pertaining to the questions of infringement and nullity. This is why the plaintiff was required to restrict the reply to the alleged nullity, for the time being. If the plaintiff had provided his full reply already prior to the preparatory hearing, he would have had already two submissions on file pertaining to the allegend infringement. This would negatively affect the interests of the defendant. Moreover, the plaintiff would have no opportunity anymore to consider learnings from the preparatory hearing when his full reply was already on file.

The FPC decided to not take the latest submission of the plaintiff into account (except for the indication of the persons attending the preparatory hearing), and the defendant was not required to respond.

As a sidenote, the FPC held that parties may well request reconsideration if they deem an order inappropriate. However, it is not admissible to comply with an order in first place, and to later on undermine it with yet another submission.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. O2012_039 ¦ Decision of 21 May 2013 ¦ “Auszug aus der Verfügung betr. Prozessleitung”

(not identified) ./. (not identified)

Subject(s):

  • Patent infringement

Composition of the Board of the FPC:

  • (not identified)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

—

Full text of the decision right here:

Download (PDF, 16KB)