[The FPC] did not examine whether there was a causal connection between the improper novum [document E10] in the rejoinder and the verbal limitation of the patent claim, i.e. whether the limitation was specifically occasioned by [E10]. The case must thus be remitted to [the FPC] for assessment of this issue.
Now, was the verbal limitation of the patent been occasioned by E10 (JP S61-205023) that had been submitted only with the rejoinder? The decision discusses three criteria in order to assess this question; ¶ 16:
Is the limitation admissible; Art. 24 PatA?
Is the claimed subject-matter after the limitation new and non-obvious?
Does the limited claim still cover the attacked embodiment?
All three criteria are met here. And the decision holds that it would not be realistic to assume that this just happened by accident:
It is hardly conceivable that the patentee would come up with a permissible limitation leading to a claim which is infringed by the attacked embodiments without reacting to [E10 and other prior art] in a technical sense.
But what is more, the plaintiff specifically argued why the limited claim was new and non-obvious over E10. Accordingly, the decision holds that the limitation had effectively been occasioned by E10.
A further aspect of the decision relates to timing. The law requires submission of improper nova (such as a limitation of the claims) ‘immediately’; Art. 229(1) CPC. The decision holds that a submission within 10 days is fine, but not mandatory: As long as a time limit is currently pending for the respective party for a submission on the merits of the case, submission of the novum within that time limit is also fine.
The Supreme Court had already made clear that the mere fact that the plaintiff had presented the very same limitation with the second part of the reply (according to the old practice) is irrelevant; see 4A_70/2019, ¶ 2.5.3.
Still, I am bursting with curiosity: How comes that the plaintiff had limited the claim in exactly the same way with the completed reply, i.e. at a time when E10 had not yet been at stake? Is that just a coincidence? I can hardly believe that.
From the Supreme Court decision in ¶ 2.5.3, one might read between the lines that E10 had been at stake at the instruction hearing:
Anyway, it is left explicitly undecided whether a mentioning of E10 in the informal part of the instruction hearing would have allowed the plaintiff to react thereon in any event, in view of Art. 8(4) lit. b of the Guidelines on Proceedings before the FPC.
Maybe, E10 had been discussed between the parties, outside of the court proceedings? There is an obiter dictum in the decision that suggests that this would not oblige the plaintiff to react on this in the proceedings in advance:
No, not yet. The advantage of being late with this report is that I now already know that this decision has (again) been appealed to the Supreme Court. Up, and down. Up, and … – down? Or done? We shall see.
However, the plea for nullity in defense was unsuccessful. The decision holds that features 1F [b] and 1F [c] were not disclosed in WO 02/071933 A2 and Wachter et al. (2003); thus, novelty was acknowledged. Further, the decision holds that features 1F [b] and 1F [c] were also not rendered obvious by any combination of prior art asserted by defendant.
Claim 1, broken down into features
The decisive features re novelty and inventive step are highlighted.
A device with a screen
in order on this to represent acquired, changing values with a mechanical ventilation of a patient,
with means for acquiring at least three changing values of different origin,
and means for representing the values,
which permit the acquired values to be qualitatively represented together on the screen
in a single element
said graphical element including
a pictorial representation of a lung shape,
a current design of the lung shape containing qualitative information on the compliance of the lung,
characterized in that
the means for representing [the] values are designed such
that a volume change of the ventilated lung which is acquired with each breath, is represented in an animated manner
by way of a size change of the lung shape corresponding to this volume change,
involving an animation of a contour line of the lung shape,
the design of which containing qualitative information on the compliance of the lung.
The defendant was thus ordered to abstain from further use of ventilation machines with the ‘Animated Lung‘ feature, and to provide information and accounting concerning previous use thereof.
All that appears pretty straight-forward to me, even though the prior art comes pretty close. But still, there are some quite pointed remarks in the decision on various aspects, both procedurally and on the merits.
Lack of legal interest in certain requests for injunctive relief
In parallel to the requests for injunctive relief that had finally been allowed, the plaintiff also requested essentially the same again in more limited form, i.e. with i) the additional recitation of the machine types ‘bellavista 1000’, ‘bellavista 1000e’ and ‘bellavista 1000 neo’; and ii) the combination with certain flow-through sensors.
The decision holds that the plaintiff has no legal interest in these requests since the broadest request already cover these more limited requests. Noteworthy, 20% or the costs were clapped on the plaintiff despite his success on the merits with respect to the broadest requests.
The requirement of definiteness of a request for injunctive relief
The decision gives a finely chiseled differentiation of the requirement of definiteness of a request for injunctive relief on the one hand (which is a bar to proceeding, to be examined ex officio), and the plea in defense that the request for injunctive relief is overhooting on the other hand, i.e. that it extends beyond the scope of the patent as asserted (not to be examined ex officio; potentially leading to (partial) dismissal of the action):
Interestingly, the decision holds in very general terms that the FPC will only very reluctantly assume indefiniteness of a claim for injunctive relief, in the absence of a respective complaint of the defendant; see ¶15, above.
Further, it is held that an overshooting request for injunctive relief will lead to ‘(partial) dismissal’ of the action; see ¶15, above. Maybe I am overinterpreting the ‘partial’ in brackets here, but I wonder what that means in practice: In first place, the request for injunctive relief stands as requested — and cannot be allowed as-is because it is overshooting. In principle, I believe that the court could re-phrase the request to make it commensurate with the scope of the patent as asserted (even though that might be a tricky exercise). Similarly, see e.g. the hn in O2015_009 with respect to sole vs. joint ownership of a patent application. As much as I recall, the FPC never actually narrowed down an overshooting request for injunctive relief, to make it commensurate with the patent as asserted.
A broad feature is not necessarily unclear
Broadness of features is frequently confused with (un)clarity, in particular when it comes to functional features. The decision holds in no uncertain terms that this is a misconception; see ¶16:
Der Begriff ‘Gerätesteuerung’ ist ein funktionaler Begriff, der alles umfasst, was das (Beatmungs-)Gerät steuert. Nicht jeder breite Begriff ist automatisch unklar. Der Begriff ‘Gerätesteuerung’ ist zwar breit, aber klar.
By the way, the same holds true in prosecution: I am prepared to deal with any prior art that is thrown at me as long as it reasonably reads on a broad, functional feature. But it goes against the grain for me when an objection re clarity is raised presumably only for convenience.
Admissibility of reply to new assertions in the rejoinder
The defendant apparently came up with a whole lot of new assertions only in the rejoinder, i.e. that i) EP 805 extended beyond the application as originally filed; ii) the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person; iii) the attacked embodiment did not provide qualitative information with the contour line of the lung; and iv) that the claim to priority was not valid, alongside with new evidence and reliance on a witness.
The decision holds that plaintiff’s filing of new pieces of evidence had effectively been triggered by the rejoinder, and the evidence was thus admitted into the proceedings; see ¶19:
The defendant had requested that Mr Frank DREWS be heard as a witness. To no avail. The decision umistakably holds that witnesses are not to be heard with respect to questions of law, such as e.g. the definition of the skilled person, the issue of technicality (see below), or the skilled person’s understanding of certain features; see ¶21:
Vorab ist festzuhalten, dass Zeugen zu Tatsachen befragt werden, nicht zu Rechtsfragen.
Further, the decision holds that the procedure of taking evidence (Art. 150 et seqq. CPC) cannot replace lacking allegations or supplement incomplete allegations. Rather, appropriate allegations are the prerequisite for the taking of evidence (see ¶20, with reference to 4A_338/2017, ¶2.1):
Das Beweisverfahren dient […] nicht dazu, fehlende Behauptungen zu ersetzen oder zu ergänzen, sondern setzt solche vielmehr voraus.
The decision holds that defendant’s reliance on Mr Frank DREWS as a witness did not meet this standard. Accordingly, the witness had not been heard.
The FPC follows the EPO’s ‘Comvik’-approach
In EPO practice, a so-called mixed invention that comprises both technical and non-technical features is assessed according to the ‘COMVIK’ approach, in accordance with T 641/00 (Two identities / COMVIK). In a nutshell, an invention is not excluded from patentability under Art. 52(1), (2) EPC when it comprises at least one technical feature. This threshold is easily met; mere presence of e.g. a computer, a display, etc. is sufficient to pass the test. However, those features that do not have (or contribute to) a non-obvious technical effect cannot render the claimed subject-matter inventive.
Note that the IPI applies a different test, according to the IPI Guidelines for Examination (January 2019, p. 16):
The IPI applies a ‘holistic’ approach (‘Ganzheitsbetrachtung’) in the assessment of technicality of the claimed subject-matter. In contrast to the EPO’s ‘COMVIK’ approach (T 641/00), this means that e.g. a claim directed to e.g. an method for analysis of certain items that is carried out with the help of a computer may well be refused by the IPI for lack of technicality (if it can e.g. be used for both technical and non-technical purposes), while the mandatory use of a computer would establish technicality at the EPO in any event. Whether or not the method would ultimately be considered inventive or not by the EPO, that’s of course a different story.
The decision holds that the FPC will apply the ‘COMVIK’-approach, and it is noted in passing that it will also do so for Swiss national patents; see ¶ 46:
In brief, the IPI takes the following into consideration in the assessment of whether or not an invention is 'technical': (i) The _problem_ to be solved; (ii) the _means_ for solving the problem; (iii) the _effects achieved with the solution of the problem; and (iv) the necessity of _technical considerations_ in order to arrive at the invention.
Being trained as a European patent attorney, I had always felt that the ‘holistic’ approach was examination on the merits in disguise. In order to properly assess these criteria, one necessarily has to consider the invention as claimed in light of the prior art — what in my opinion is not sth the IPI should currently be doing (but maybe in the future; see this Blog here). I feel that time is ripe to abolish with the ‘holistic’ approach / ‘Ganzheitsbetrachtung’. It appears odd to me to systematically apply two different approaches in prosecution and nullity proceedings, in the mere hope that in the end the overall result re patentability might be the same, i.e. that non-patentable inventions are sorted out in any event, just by a different token.
On a sidenote, the decision discusses the different approaches being taken by Boards of Appeal in the assessment of novelty of mixed inventions; see ¶54. Nowadays, the majority considers all features in the assessment of novelty, irrespective of whether they are technical or not. Some other decisions apply the concept of ‘technical novelty’, i.e. only technical features are considered in the assessment of novelty; see also the discussion in Case Law of the Boards of Appeal, I.D.9.1.3 c), second paragraph. In practice, that only matters when intervening prior art under Art. 54(3) EPC is at stake — which is not the case here. Anyway, the decision rightly holds that consideration of all features in the assessment of novelty would be pragmatic since only the new features would have to be assessed re technicality in the next step; if a feature is not new, it just doesn’t matter whether it is technical or not.
burden of proof for the actual fulfillment of an ambitious technical problem in the assessment of inventive step
The decision raises an interesting question in relation to the assessment of inventive step; see ¶65. Just assume that the patent in suit asserts that an ambitious technical problem is solved by the invention. Later, in civil proceedings and in view of the same prior art as discussed in the patent in suit, the counterparty asserts that this ambitious technical problem is not solved. Now, is the burden of proof on that issue with the patentee or the counterparty?
That’s a tough question, indeed. The decision avoids to give an answer; the FPC could do so in the case at hand because the invention was held non-obvious even in view of the least ambitious technical problem to be solved.
That’s definitely lawyers’ playground. But in my perception, neither party should benefit from a mere ‘sit back and relax’ mentality in such instances. Assuming there is at least some reasonable indication (in the patent itself or through secondary evidence) that the ambitious technical problem is actually solved, I would see a burden on the counterparty to overturn this circumstantial evidence, with at least the same degree of certainty. It would appear somewhat artificial to me if the full burden of proof would be on the patentee right from the outset. Similarly, according to Art. 178 CPC, the authenticity of a document needs only to be proven when disputed, and when adequate grounds for disputing are given.
No plea OF free state of the art in case of literal infringement
The decision holds that the defendant cannot argue as a plea in defense that the attacked embodiment is free state of the art (or rendered obvious by the free state of the art). This plea effectively is a nullity plea in defense (asserting lack of novelty or inventive step, respectively), and to be examined as such.
With reference to O2013_008 (¶4.6), the decision holds that the plea of free state of the art can only be legitimately raised in order to rebut the assertion of infringement under the DoE, but not in cases of literal infringement.
I am not so sure. Does it really have to be so dogmatic?
Assuming a defendant can show that the attacked embodiment is an exact blueprint of what has been described 50 years ago. Undoubtedly, no valid patent that is currently in force can cover the attacked embodiment anymore. Not the patent in suit, and not any other one. Why bother with a detailed feature analysis and all the tedious questions of claim construction in the assessment of nullity? There is just no need for that. One may construe the patent in suit in any way whatsoever: It cannot be valid and at the same time read on the attacked embodiment.In view of procedural economy, it would make perfectly sense to shut the docket based on the plea of free state of the art, in my perception. See e.g. BGE 115 II 491 (¶2b) and F. Blumer in sic! 1/1998, p. 3 et seqq. in this respect, and Eugène Brunner’s critical comments in sic! 4/1998, p. 428-429 (with which I do not concur, for e.g. the reasons outlined above).
Information on downstream commercial customers
The decision holds in ¶86 that the identity of downstream commercial users and the extent to which the infringing products had been passed on to them is not a secret worthy of protection once infringement is established; the interests of the patentee take precedence (Art. 66 lit. b PatA):
Die Identität der gewerblichen Abnehmer und das Ausmass der Weitergabe von patentverletzenden Produkten an sie ist bei nachgewiesener Patentverletzung kein schützenswertes Geheimnis; die Interessen des Patentinhabers gehen vor (Art. 66 lit. b PatG)
This principle had been established in O2013_008 (hn), but the recent decision O2016_012 appears to be at odds with this, at least at the face of it; see O2016_012, ¶102.
The value in dispute of an action by stages
The decision discusses the issue of the value in dispute in an action by stages (see ¶92): Should the value in dispute in patent infringement proceedings be fixed based on the first stage only (i.e. information / accounting and injunctive relief), or should the aggregate (monetary) claim that is subsequently dealt with in the second stage of the proceedings also be taken into account?
The decision opts for the latter. If a complaint is dismissed, this also implies dismissal with respect to monetary claims; it would thus be inconsistent if the value in dispute would be systematically addressed differently only because the outcome of the proceedings is different on the merits. However, the court fee is fixed to only CHF 70’000,– which is even less than what the tariff at the lower end would allow for in Art. 1(1) CostR-PatC in view of a value in dispute of CHF 4m, in consideration of the fact that it is only a partial decision that not yet deals with the monetary claims.
Defendant (1) is the Austrian manufacturing company of the allegedly infringing ANA.NOVA® hybrid socket, which defendant (2) is then placing on the Swiss market.
Partial waiver of the patent
The plaintiff partially waived EP 869 at the IPI, to overcome the judge-rapporteur’s finding in his expert opinion with respect to a presumably undue extension of subject-matter. The partial waiver has thus been filed at a very late stage of the proceedings, i.e. only after formal closure of the file and only about nine months after the defendant’s rejoinder wherein the undue extension of subject-matter had been asserted.
The partial waiver has been published on 15 August 2018. Independent claims 1 and 2 now read as follows (inofficially translated; changes marked-up):
A joint prosthesis (1) with a base body (10) for knocking into a bone, characterised in that there are arranged at least two locking elements (20) on the outer side of the base body (10) which in each case comprise at least one knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.
A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.
Noteworthy, the plaintiff’s statement of claim had not been changed, and no new factual allegations had been brought forward. The parties heavily disagree on whether or not the partial waiver of the patent at this stage of the proceedings was admissible as a novum according to Art. 229 CPC, and whether the plaintiff’s conduct was in good faith; Art. 2 CC.
The decision holds that the plaintiff made use of a possibility that is explicitly provided for in Art. 24 PatA, and that this partial waiver is effective ex tunc, i.e. the patent is treated as if it had been granted only to that extent from the outset. This is a new fact within the meaning of Art. 229(1) lit. a CPC (proper novum), because the patent in that limited form was only created after the formal closure of the file. The fact that the plaintiff could have requested the partial waiver with the IPI well before the closure of the file, or that the partial waiver represents a new fact created by the plaintiff himself, does not change anything in this respect. Art. 229(1) lit. a CPCdoes not regulate how or by whom a new fact must have arisen or been created for it to qualify as a new fact. The emergence of a fact after the conclusion of the exchange of letters is the only necessary and thus sufficient condition for a proper novum.
Further, the decision holds that a new fact has actually arisen which did not exist before: The plaintiff’s patent in the original version no longer exists, but the plaintiff’s patent in the partially waived version has been newly created. This is why the proceedings have not become devoid of purpose, as the defendants argued; this would only be the case if no patent existed at all anymore. In the FPC’s view, it must be possible to take into account new developments concerning the facts on which the action is based; otherwise the proceedings will just miss the point. In addition, the decision holds that consideration of the partial waiver is proper for reasons of procedural economy: If the partial waiver was not permitted as a proper novum, the FPC would have to hand down a meaningless judgment because it assesses the legal situation on the basis of a patent which no longer exists in that form.
The decision also emphasizes that the patent after the partial waiver fits smoothly into the subject-matter as it was already discussed in the proceedings, and the parties’ right to be heard had well been observed.
Further, the FPC assessed whether introduction of a new fact created by the plaintiff himself after closure of the file was an abuse of the possibilities foreseen in Art. 229 CPC. The decision holds that this is not the case since the partial waiver pursuant to Art. 24 PatA was expressly provided by the legislator, without limits. However, the fact that the plaintiff requested the partial waiver only after the judge-rapporteur had already established his expert opinion was taken into account in the apportionment of costs: 1/3 is to be covered by the plaintiff, despite his success on the merits.
Finally, the FPC did not share defendant’s concerns that patentees would henceforth trigger new expert opinions on a rolling basis, as long as the result is not (yet) favorable:
Schliesslich ist noch auf die Bemerkung der Beklagten einzugehen, wonach es im Interesse des Patentgerichts sei, zu sagen, wann fertig sei. Sonst könne der Patentinhaber ja beliebig oft zuerst sich vom Fachrichter eine Beurteilung holen und dann wieder einschränken, und dann nochmals eine Beurteilung und dann nochmals einschränken. Irgendwann müsse mal Schluss sein, das sei Sinn und Zweck von Fristen und der Novenregelung.
In short, as Giovanni Trappatoni would likely put it: Defendants argued that, after the formal closure of the file, it is time for the court to say …
However, the FPC notes (again) that the expert opinion of the judge-rapporteur in no way anticipates the final judgment. The patentee thus runs the risk that the partial waiver at the IPI, which is final and binding, could be in vain or even counter-productive. Further, it is not carved in stone that a second, revised expert opinion will be established.
All this is definitely lawyers’ playground. But in my opinion as a patent attorney, the FPC took a non-formalistic, pragmatic approach — which I like. However, not all judges were comfortable with it; see below.
Undue extension of subject-matter
Defendants objected that the partially waived patent was unduly amended both in terms of Art. 123(2) and Art. 123(3) EPC. Those issues are always very case-specific, and I do not believe that it is worthwile to dive deeper here, at least for the time being. In short: The FPC did not buy defendants’ arguments.
The decision acknowledges novelty over FR 1 781 363 (D1; see e.g. Fig. 1) and an apparently corresponding product, ‘Equateur’ (D2):
Likewise, novelty over DE 196 06 057 (D5; see e.g. Fig. 2) is also acknowledged.
In a nutshell, the decision holds that the claimed subject-matter is based on an inventive step in view of
I have no strong opinion on the actual outcome, i.e. whether the claimed subject-matter was obvious or not. However, some minor flaws in terminology will likely add to the ‘land of confusion’ re obviousness. For instance, I just don’t get what is meant with
(obvious motivation / pointer) in ¶84. Is this intentionally demanding for more than mere existence of a motivation or pointer? Does the motivation or pointer itself have to be obvious, too; and not only the claimed subject-matter as such? I hope not so.
Further, I do have some methodological concerns.
i) Motivation and reasonable expectation of success?
The FPC has repeatedly committed to apply the EPO’s problem-solution approach, at least as a rule. Even though the present decision does not reiterate this, I have no reason to assume that it is an exception to the rule.
The decision provides a very concise summary of how obviousness is to be assessed (¶60, emphasis in original), presumably according to the problem-solution approach:
Damit mangelnde erfinderische Tätigkeit begründet werden kann, muss gezeigt werden, dass ausgehend von einem als Ausgangspunkt gewählten Dokument des Standes der Technik eine Motivation bestand, die erfindungsgemässe Änderung vorzunehmen, und dass angemessene Aussichten auf Erfolg bestanden, dass eine solche Modifikation auch die erfindungsgemäss vorteilhafte Wirkung nach sich zieht.
It is not the first time that I am troubled by this standard; see e.g. this Blog here and here. In S2017_001 (¶4.7), reference had been made to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, ¶73-74) in this respect, but this reference is not convincing for at least the reasons given on this Blog here.
Now, the present decision does not give any reference anymore.
The EPO’s problem-solution approach does not require the assessment of a reasonable expectation of success. The Guidelines are clear in this respect. It was only in the most recent 2019 edition of the Guidelines that the ‘reasonable expectation of success’ has first been mentioned in the context of obviousness at all (G-VII, 13), as follows:
According to the title, this mentioning of a ‘reasonable expectation of success’ is being made exclusively for the ‘field of biotechnology’. And, what is more, the Guidelines correctly discuss three level of confidence with respect to the results, i.e.:
reasonable expectation of success; and
mere ‘try and see’ attitude.
Even for the lowest level of confidence, i.e. the mere ‘try and see’ attitude, it is held that this does not necessarily render a technical solution inventive. Rightly so; this is in full conformance with the established case law of the Boards of Appeal; see here.
Now, think about it:
On the one hand, in view of ¶60 of the decision, it is an absolute show-stopper (“[…] muss gezeigt werden, dass […]”) for a plaintiff in nullity proceedings if he cannot establish a ‘reasonable expectation of success’; while
on the other hand, in accordance with the established case law of the Boards of Appeal, even a ‘try and see’ attitude may well have carried the day for an applicant / patentee before the EPO.
This cannot be it.
In my perception, the criteria as defined in ¶60 are not in accordance with the problem-solution approach as it is applied by the first instance bodies of the EPO (which mandatorily apply the Guidelines) and as it is interpreted by the Boards of Appeal. The ‘reasonable expectation of success’ clearly is not a cornerstone of the problem-solution approach per se (not to mention beyond biotech) — contrary to what the general emphasis in ¶60 of the decision suggests, as well as the frequent repetition in the individual assessment of attacks (¶64, ¶73, ¶84).
Don’t get me wrong, I am not saying that the requirements defined in ¶60 are unsuitable for the assessment of obviousness in accordance with Art. 56 EPC and Art. 1(2) CH-PatA. It would just not be the EPO’s problem-solution approach as I know it. Rather, this interpretation of the problem-solution approach would effectively lower the bar for patentees: A mere ‘try and see’ attitude would inevitably lead to a finding of non-obviousness — contrary to EPO practice.
Notably, the same issue had been a sideshow in S2019_007; see this Blog here. In that case, it had essentially been held that ‘reasonable expectation of success’ is not necessary if the skilled person has an incentive for any other reason. The skilled person will then just take the necessary steps towards the invention unless he has to assume that this is hopeless right from the outset. I do concur with this.
ii) What is not mentioned or suggested in the closest prior art must not be considered in the context of the objective technical problem?
The decision holds that a certain aspect must not be considered in the context of the objective technical problem because this aspect is not mentioned in the closest prior art; see ¶74, second paragraph:
Der Aspekt der Verdrehung ist entsprechend etwas, was der D5 nicht zu entnehmen ist, darf also auch nicht im Rahmen der Aufgabe berücksichtigt werden.
In my perception, it is indeed correct to not recite this specific aspect in the wording of the objective technical problem. But this is not because this aspect is not disclosed in the closest prior art. This is just irrelevant. Rather, it must not be recited in the wording of the objective technical problem because it would be a pointer towards the solution, and this is what the EPO Guidelines on the problem-solution approach prohibit (G-VII, 5.1):
[…] one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the ‘closest prior art’ and the difference (also called ‘the distinguishing feature(s)‘ of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the ‘closest prior art’, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem. […]
It is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity (see T 229/85).
The latter is the reason for non-consideration of the specific aspect in the formulation of the objective technical problem. It has nothing to do with the closest prior art.
See also the discussion about a similar issue on this Blog here.
The tricky issue is the gradient of the knock-in web of 85° to 60°. In a nutshell, the decision holds that, in accordance with the patent in suit, the gradient is to be measured with the so-called ‘optical method’. Further, based on the evidence submitted by the plaintiff, the decision holds in ¶94 that the gradient in the attacked embodiment is within a range of 84.31 – 85.04°, and that at least two knock-in webs feature a gradient below 85°. Apparently, this was also supported by defendants’ own submissions. However, defendants argued that their knock-in webs were curved, not linear; and that it was thus not possible to rely on the ‘optical method’. However, the decision holds that the curvature, if it existed at all, was de minimis (¶95).
The decision holds that there is literal infringement. As a consequence, the second request for injunctive relief was allowed. The primary request for injunctive relief, that extended beyond the range of the claim in an attempt to cover infringement under the DoE, was denied for lack of legal interest in the assessment of a request that reached beyond the wording of the claim (83° to 86.5°).
Request for information on Downstream commercial users
While the request for production of accounting information about defendants’ own net sales and gross profit was allowed, plaintiff’s request for information about downstream commercial users was denied. The decision holds that no reasoning / legal interest in this information had been established, and the defendants’ interest in secrecy prevailed:
[Es] wird bezüglich der Erforderlichkeit von Angaben zur Identität der gewerblichen Abnehmer und das Ausmass der Weitergabe von patentverletzenden Produkten seitens der Klägerin keinerlei Begründung oder rechtliche schützenswertes Interesse angeführt, sodass das von den Beklagten geltend gemachte Geheimhaltungsinteresse in diesem Punkt zu berücksichtigen ist.
Frankly, this is somewhat surprising to me. I had assumed that, once infringement was established, a plaintiff was entitled to such information simply by virtue of Art. 66 lit. b PatA; cf. O2013_008, hn and ¶5.4 (emphasis added):
[H]insichtlich des zivilrechtlichen Schutzes [kann] der Beklagte verpflichtet werden […], Herkunft und Menge der in seinem Besitz befindlichen Gegenstände, die in Verletzung des Klagepatentes widerrechtlich hergestellt oder in Verkehr gebracht wurden, anzugeben und Adressaten sowie Ausmass einer Weitergabe an gewerbliche Abnehmer zu nennen. Dieser materiell-rechtliche Anspruch auf Auskunftserteilung und Rechnungslegung besteht bei Vorliegen einer Patentverletzung zunächst unabhängig davon, ob die Patentinhaberin die Grundlagen eines Anspruchs auf finanzielle Kompensation aufgezeigt hat.
The present decision does not make any reference to O2013_008. What a pity! It would have been very interesting to learn more about why the request for information about downstream commercial users was denied in the present case, despite the ratio decidendi of O2013_008.
It is for the first time that a decision of the FPC comes along with a dissenting opinion attached to it, in accordance with Art. 13(3) of the Regulations on the FPC. Interestingly, the dissenting opinion had not yet been attached when the decision was first published on 13 November 2019; see here.
Neither the actual split of the panel (4:1 or 3:2) is disclosed, nor the name(s) of the dissenter(s). Admittedly, I am bursting with curiosity. However, I do appreciate that this is a way to preserve the judges’ independence; see e.g. the 2012 Study on behalf of the European Parliament on Dissenting opinions in the Supreme Courts of the Member States; p 37, ¶ 3.3.5, last paragraph.
UPDATE 4 December 2019:
It had been mentioned at the occasion of the INGRES conference on 3 December that the actual split of the panel was 3:2.
Clearly, the procedural question of whether or not the partial waiver is to be considered in the proceedings at such a late stage is a highly interesting one. The decision itself expands on this issue pretty exhaustively on about six pages, and finally admits the partial waiver into the proceedings; see above. On the other hand, the dissenter(s) — in an opinion which is twice as long! — would have thrown the case out entirely (¶13 of the dissenting opinion, loosely translated):
[T]he minority of the judges takes the view that the [partial waiver] cannot be accepted as a novum in these proceedings. The partial waiver cannot be considered as a proper or improper novum within the meaning of Art. 229 para. 1 CPC. Moreover, the plaintiff’s conduct is also contrary to good faith. Accordingly, the complaint is not to be considered. The plaintiff has no legal interest in having the infringement of a [patent claim] examined by the court which is no longer in place and which has never had effect from the outset (cf Art 28a PatA).
On a separate issue, I do not readily get the point of ¶14 of the dissenting opinion. On the one hand, the minority argues that proceedings for taking evidence would be necessary in order to properly assess the question of infringement, because the court lacks the appropriate measuring instruments for a reliable determination. On the other hand, the minority also acknowledges that the burden of proof is with the plaintiff in this respect(?).
Now, let’s see what the Supreme Court does with all this; I have no reason to assume that this decision will not be appealed.
On the funny side
Last but not least, I stumbled upon the following in ¶77 (with my personal annotations on a working copy of the decision):
I cannot help but think about what is probably the most versatile item in my toolbox: The offset screwdriver (‘Winkelschrauber’ in German).
Oh, if only the skilled person had had an offset screwdriver at hand, to fiddle with the angle of approach! But, maybe, the skilled person might still have screwed things up …
If in a patent infringement proceeding the plaintiff files before the instructional hearing a reply limited to the defense of the validity and no pleadings take place at the instructional hearing, the plaintiff may submit new allegations of fact, and therefore also amended patent claims, in the completed reply filed after the instructional hearing without having to meet the requirements of art. 229 para. 1 CPC.
Please find some background information about the subject-matter at stake on this Blog here, and a report about the main hearing of 29 October 2018 on this Blog here.
The only independent claim 1 of CH’755 as granted reads as follows:
Durchflussmessfühler (10) mit einem ein zylindrisches Gehäuse (10) definierenden Durchgang mit einer ersten Durchgangsöffnung (13) und einer zweiten Durchgangsöffnung (29); einem im Durchgang des Gehäuses angeordneten Strömungswiderstand (23), welcher das Gehäuse in einen ersten und einen zweiten Gehäuseteil (11 und 27) unterteilt; einer ersten Anschlussstelle (17) mit einer Verbindung zum Innern des ersten Gehäuseteils (11); und einer zweiten Anschlussstelle (19) mit einer Verbindung zum Innern des zweiten Gehäuseteils; dadurch gekennzeichnet, dass die ersten und zweiten Anschlussstellen (17, 19) in einem Abstand voneinander auf dem gleichen Gehäuseteil angeordnet sind.
Inofficially translated to English language:
Flow sensor (10) with a passage defining a cylindrical housing (10) with a first passage opening (13) and a second passage opening (29); a flow resistor (23) arranged in the passage of the housing which divides the housing into a first and a second housing part (11 and 27); a first terminal (17) having a connection to the interior of the first housing part (11); and a second terminal (19) having a connection to the interior of the second housing part; characterised in that the first and second terminals (17, 19) are spaced apart on the same housing part.
Fig. 1 of CH’755 surely helps to understand what the invention is about:
The defendant denied an infringement, and argued for nullity as a plea in defense.
The verbal limitation of the patent
This is what the hn is all about. Imagine a plaintiff / patentee in infringement proceedings who is confronted with a plea for nullity in defense: When is his last chance to formally assert his patent only to a more limited and presumably valid extent?
First, it is important to understand how the FPC conducts the proceedings. If the defendant raises a plea for nullity in his answer to plaintiff’s statement of claim in infringement proceedings, the FPC invites the plaintiff to file a reply which is strictly limited to only the nullity aspects of the case. What follows next is an instructional hearing. In preparation of that hearing, the limitation of plaintiff’s reply to only the nullity aspects is to assure that the court has a single exchange of opinions at hand for both infringement and nullity. If the case moves on after the instructional hearing, it is again up to the plaintiff to complete his reply. Thereafter, the defendant provides the rejoinder re both infringement and nullity. This is the end of the regular exchange of briefs in which the parties can present facts and arguments without the need to comply with Art. 229(1) CPC (novae). However, the plaintiff may of course comment on new allegations and facts presented by the defendant in his rejoinder — within a deadline set by the FPC (typically two weeks, extendable by one further week; see this Blog here), or under the unconditional right to be heard (within 10 days).
The below is an illustrative summary of this chain of events:
Statement of Claim
w nullity plea in defense
re alleged nullity only
Instructional hearing w/o pleadings
re infringement and nullity
re infringement and nullity
on new factual allegations in the rejoinder, if any
Judge rapporteur’s expert opinion
Note the subtitle to the second reply in the above: The decision holds that the plaintiff may present arguments and facts in his second reply after the instructional hearing not only relating to infringement aspects, but rather also to the nullity aspects of the case.
In the defendant’s view, the plaintiff thus had three chances to deal with validity / nullity of the patent, i.e. in his initial statement of claim and both his replies. The FPC disagreed: There is no reason for a plaintiff to deal with nullity in the beginning. How would he even do so in the absence of any knowledge of the defendant’s potential arguments? Thus, the FPC held that both parties had exchanged their views on both aspects of the case for the first time only after plaintiff’s first reply (limited to nullity). With the second reply and the rejoinder, both without limitations re novae, the double exchange of briefs is concluded.
Undoubtedly, an amended claim is to be considered a new fact (decision 4A_543/2017 of the Supreme Court, ¶2.3); as such, it would be an inadmissible novum after the normal exchange of briefs.
The plaintiff ‘verbally limited’ the claim only in his second reply. The defendant argued that this second reply was limited to only infringement aspects; it should only complement the first reply that had already dealt with nullity. Defendant argued that this was established practice at the FPC. Again, the FPC disagreed: There was not an established practice of the FPC in that sense.
Interestingly, the former President Dieter Brändle had apparently indicated in the instructional hearing that the patent could not be asserted in a more limited form any more after the instructional hearing. Defendant argued that it is against good faith if the limitation was now accepted nevertheless. However, the decision holds that it is up to the whole panel of judges to finally rule on admissibility of new facts; Mr. Brändle only gave his personal, preliminary opinion on this issue at that time. When the defendant had been invited to provide his rejoinder, this came along with an explicit note to deal with plaintiff’s reply as a whole, and that the whole panel of judges would finally decide on admissibility of the limitation of the patent. Thus, the defendant had no procedural disadvantage.
On a sidenote, I am wondering what the last point of time would be for a patentee / plaintiff to limit the claim when faced with a full-fledged counterclaim for nullity, i.e. when there are two parallel tracks of claim and counterclaim:
Statement of Claim
Answer re c’claim
Instructional hearing w/o pleadings
on new factual allegations in the rejoinder re c’claim, if any
Judge rapporteur’s expert opinion
Would the plaintiff’s reply after the instructional hearing then be limited to the infringement part, and the final chance to limit the claim be the rejoinder re c’claim? This remains to be seen in a case to come.
General remarks on claim construction
The decision summarises certain key aspects of claim construction in ¶25 (and, later on, in ¶47). I do readily agree with most of it, but stumbled upon the following:
When case-law refers to ‘broadest interpretation’ of claim features,15 the feature must still be capable of fulfilling its purpose in the context of the invention. This means that the claim must not be interpreted under its wording, but also not in such a way that embodiments are covered which do not achieve the inventive effect.
15 FPC, decision O2013_008 of 25 August 2015, ¶4.2 — ‘elektrostatische Pulversprühpistole’ [see this Blog here]
The decision cites ample case-law, but there is no fn in the last sentence. Now, where does that come from? The sentence somehow reminds me of hn 3 of the ‘Spannschraube’ decision of the German Federal Supreme Court, X ZR 85/96 of 2 March 1999. The German Supreme Court had held:
The scope of protection of a European patent cannot be extended to embodiments which wholly (or to an extent which is practically insignificant) waive the success sought by the patent.
However, the Swiss Supreme Court had to assess the same subject-matter shortly thereafter, and explicitly disagreed; 4C.348/1999 of 12 April 2001: What had been considered to be no infringement in Germany, was well an infringement in Switzerland!
The Swiss Supreme Court did not see any reason to deviate from the literal and technically plausible meaning of the feature — even though an explicit object of the patent that had been recited in the specification was not achieved by such embodiments, i.e. the use of very short clamping screws (see EP 0 319 521 B1, col. 1, l. 54-57):
Der Erfindung liegt die Aufgabe zugrunde, eine Rohrschelle der eingangs genannten Art zu schaffen, die sich auch mit einer sehr kurzen Spannschraube gut handhaben und leicht schliessen lässt.
It remains to be seen whether the present decision might indicate a gradual departure from the old Spannschrauben approach of the Swiss Supreme Court.
The claims at stake can be summarized as follows, structured into features:
Flow sensor (10) with
a passage defining a cylindrical housing (10) having a first through opening (13) and a second through opening (29);
a flow resistor (23) arranged in the passage of the housing, which divides the housing into a first and a second housing part (11 and 27);
a first connection point (17) having a connection to the interior of the first housing part (11);
a second connection point (19) having a connection to the interior of the second housing part;
the first and second connection points (17, 19) being arranged at a distance from one another on the same housing part;
claim 4 as granted:
wherein flanges are provided on the first housing part (11) and on the second housing part (27) for connecting the housing parts with flange pressure surfaces (15, 16, 31, 32) are formed;
first variant of claim 10 as granted:
wherein the connections run partly in the flange pressure surfaces,
second variant of claim 10 as granted:
[wherein the connections] exit through the flange pressure surface as openings on the sealing surface side (17, 19, 21, 33, 35, 37) .
Features a) – f) correspond to claim 1 as granted (marked in bold in the above); the whole set of features, i.e. a) – f) and j) – k), corresponds to the claim as limited with plaintiff’s second reply. Don’t get confused by the missing features g) and h): The parties referred to these features in their feature analysis; but they are irrelevant for the present decision since they only relate to dependent claims 2 and 3 which are not at stake.
The decision holds that claim 1 as granted lacks novelty over document E10, i.e. (JP S61-205023); see Fig. 1:
Next, the decision assesses and acknowledges novelty of the more limited claim over E1 (US 6,585,662 B1) which lacks features j) and k). Defendant had also argued that a prior use of the device of E1 had occured (prior use ‘Jones’). However, the decision holds that this prior use does not need to be assessed any further: Defendant had argued that the prior use disclosed a device according to the teaching of E1. Thus, the decision holds that any such prior use would necessarily also have lacked features j) and k).
Moving on to the assessment of obviousness, the decision emphasizes that it is up to the party that alleges nullity of a patent to make the relevant allegations. The court only examines whether the grounds put forward lead to the invalidity of the patent. Even though obviousness is a question of law, the relevant factual assertions must be made by the party that asserts nullity. In the following, therefore, the decision only deals with the assessment of obviousness starting from document E2 that has been referred to as ‘closest prior art’ by the defendant, i.e. US 4,083,245.
Features f), j) and k) are missing in E2.
With E2 as closest prior art, the decision holds that documents E7 (DE 32 25 114 C1, erroneously referred to as DE 32 25 115 C1 in the decision), E8 (US 1,768,563 A) and E9 (JP H03-21735 U) fail to render the limited claim obvious — mainly because these devices are made from metal / intended for use in high pressure applications, contrary to flow sensors in the medical field which are typically made of plastic, using die casting methods.
In sum, the more limited claim that the plaintiff had submitted with his second reply was thus held to be valid.
Defendant most fiercely contested that the adult version of the flow sensors has flange pressure surfaces and, even if there were flange pressure surfaces, that the connections from the connection points to the inside of the first/second half of the housing run partially into or through the flange pressure surfaces. Defendant referred to the computer tomographic images that had been submitted by the plaintiff:
The above figure shows a cross-section through theflanges of the two halves of the housing. The flow resistor which is clamped between the flanges is marked with 23. Identifiers 45 and 47 mark a groove and comb structure. Defendant argued that the gas-tight connection is made exclusively via the groove/comb structure. However, the flange surfaces would not touch each other (red arrows in the above figure); only the planes of the comb and groove that protrude perpendicularly from the flange surface would be in contact (white arrows in the above figure). Defendant argued that this is intentional because it allows flow resistors of different thicknesses to be used without the housing halves having to be designed differently, contrary to the teaching of the patent in suit. Since, by definition, flange pressure surfaces would have to lie against each other under pressure, flange pressure surfaces are missing in the adult version, in the defendant’s view. And even if the area in which the flow resistor is trapped by the flanges (marked with a yellow arrow in the figure above) were still called the ‘flange pressure surface’, no connections would occur there in any case. Defendant referred to the below figure in this respect (with the white squares / annotations added by the court):
The above figure again shows a cross-section of an adult version of the flow sensor. The thin vertical line is the flow resistor; identifier 33 refers to one of the connections to a connection point which seems to end on the right because it runs diagonally in the Z plane. The decision holds that ‘flange pressure surface’ and ‘flange surface’ are used as synonyms in the patent. A flange pressure surface in the sense of the claim is the surface of a flange facing away from the body part to which the flange is attached and serving to connect the body part to another body part, whereby the connection need not necessarily be made over the entire surface.
Thus, the flange pressure surface of the attacked embodiment runs over the entire width of the flange, i.e. in the above figure from point a) to point b). Consequently, the decision holds that the connections from the connection points to the inside of the first/second housing parts also run through the flange pressure surfaces, as can be seen in the figure above.
The decision holds that the defendant may have improved the teaching of the patent in suit, and the improvement might even be patentable. This does not, however, lead out of the scope of protection of the earlier patent (cf. Art. 36 PatA). In sum, the decision holds that the version for adults is literally covered by the limited claim of the patent. Likewise, the version for children is also held to be literally covered by said claim.
Wording of the injunctive relief
The defendant objected to the wording of the request for injunctive relief, for that it is too indefinite and merely recites the wording of claim features that are under dispute between the parties (such as e.g. the term ‘flange pressure surface’). The decision holds that the features are defined in the reasons of the decision beyond any doubt, so that a mere factual check by the competent authorities is well sufficient. Thus, it is neither necessary nor helpful for each and every feature to be defined in the prayer for relief itself.
Again, this reminds me a bit of the German approach where the mere claim wording is typically used in prayers for injunctive relief, and the exact scope is then to be deduced from the reasons of the decision. I do have some symphathy for the FPC’s approach that keeps the verdict clean and simple, with all the potential ambiguities being resolved by way of definitions given in the reasons.
In sum, the defendant was ordered to abstain from further use of the infringing embodiments, and to provide information and accounting concerning the same.
The parties commented on the decision with the following press releases:
The decision is not yet final; an appeal is pending at the Supreme Court.
Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”
The main hearing in this matter took place on 27 January 2016; see this Blog here for a report on the hearing and some background information on the subject-matter at stake.
Independent claim 1 of the patent in suit (EP 1 983 083 B1) reads as follows:
1. Method for applying flat pieces of material of any desired form onto an embroidery base (Fig. 6: 42) by means of an embroidery machine, wherein at least one material layer is arranged above the embroidery base (42) and, controlled by the program of the embroidery machine, a relative movement is produced between a cutting device (47) and the material layer (Fig. 6: 44), and, as a result, a flat piece of material of the desired form is cut out of the material layer (44), characterised in that the cutting is carried out by a heatable tip (47) and the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.
Yet another independent claim 7 of EP’083 is directed to the device as such and reads as follows:
7. Device for an embroidery machine, for applying flat pieces of material onto the embroidery base (42), for example figures made of another material (44) and/or of another colour than the material of the embroidery base, by embroidering in place, comprising a support (45) for securing the device to an embroidery machine, a heatable tip (47) for cutting the material layer (44) used for the application and means (57, 59) for bringing the heatable tip out of the inoperative position into the cutting position and vice-versa, characterised in that a spacer (55) is provided at the heatable tip (47), which is adjustable in order to determine the penetration depth of the tip (47) into the material layer (44), such that the tip only penetrates into the material layer (44) which is to be cut.
Already the interim assessment of the reporting judge had not been in favor of the defendant, neither concerning infringement nor with respect to the plea of nullity. That did not change anymore, the board of judges essentially followed this assessment.
Lack of novelty was not an issue; only inventive step was under dispute. Some discussion apparently concerned the definition of the person skilled in the art. The FPC holds that the person skilled in the art is to be defined in view of the closest prior art that has been chosen — as is the case with the objective technical problem to be solved, too (r. 4.9.2).
The defendant inter alia argued that the patent lacked an inventive step over D1 (JP-A-05-261187). Translation of this document was problematic. I understand from the decision that the defendant apparently only filed a machine translation — at least in first place. While r. 4.3 holds that an ordinary translation has (only) been filed with the defendant’s comments on the interim assessment of the reporting judge, r. 4.9.3 holds that no ordinary translation has been filed at all. In any event, machine translation of patent documents in Japanese language is often confusing. D1 does not make an exception in this respect; the machine translations of the abstract and the specification of D1 that I have obtained from the JPO will give you an idea of just how puzzling such translations sometimes are.
In any event, D1 apparently concerns a sewing machine that also encompasses an embroidery function, incl. a heatable tip (4/5).
However, D1 does not further specify whether M (see figures) is only a frame or a solid table. Moreover, D1 neither discusses cutting of a mulit-layer material, nor any adjustment of the depth of penetration of the tip. The FPC held that the person skilled in the art would not have arrived at the claimed invention relying on D1 alone. Further, the FPC held that the person skilled in the art would not have consulted D2 (pertaining to a laser cutting system) — but even if D2 would have been considered, a spacer would still be missing.
Yet another document was considered in combination with D1. At least a kind-of-document, i.e. paragraph  of the patent in suit. This paragraph  of the patent reviews the prior art document DE 44 26 817 A1. The document as such has apparently not been introduced into the proceedings; paragraph  of the patent is referred to as D4 in the decision. The decision casts some doubt on whether this paragraph  of the patent itself can be considered as prior art. But even if it was considered, a spacer would still be missing.
The decision also discusses an alleged lack of an inventive step over D4 (reviewing DE 44 26 817 A1) as closest prior art. However, it was not held obvious (from D4 alone or in combination with D1) to replace a laser system with a heating tip and to further include a spacer. A further combination withUS 3,902,042 (D3) did not succeed, either.
Finally, the defendant had submitted JP 82 43 776 A only belated, without any justification according to Art. 229 CPC for the late submission. The document has not been considered anymore.
In sum, the FPC held that the prior art on file did not prejudice validity of the patent in suit.
The invention is all about a cutting technology in embroidery machines which relies on a heatable tip. This heatable tip (47) and a spacer (55) provided at the tip can be seen e.g. in Fig. 3 and Fig. 3a of the patent; see also paragraph  of EP’083 for further details on the spacer.
A key issue in this case is whether the HeatCut fabric pressers are spacers (55) in the sense of the patent in suit. Let’s recall the HeatCut configuration:
The black tip in the middle of the picture is the heating tip. The silvery bars that are intermittently arranged on top of the fabric are so-called fabric pressers.
The FPC held that the claims do not require the spacer and the heatable tip to be provided on one an the same structural unit (this is only an embodiment according to Fig. 3/3a above, but not mandatory). According to claim 1, the spacer only has to be provided sufficiently close to the heatable tip to fulfil its function, i.e. to determine the penetration depth into the material layer:
[…] the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.
From the evidence on file, the FPC had no doubt that the fabric pressers are arranged exactly like that and for the very same purpose in the attacked embodiment; infringement of claim 1 was thus established.
Infringement of claim 7 was a bit more tricky. The plaintiff had argued in first place that the support (45) is not part of the claimed device. A prayer for relief including the support was only presented as an auxiliary request, and only this auxiliary request was finally allowed on the basis of the support identified in the illustration below.
The FPC clearly held that the support is part of the device as claimed and thus dismissed the higher-ranking request. This is also why the plaintiff got stuck with a share of 1/5 of the costs. But on the merits, the patent was held valid and infringed.
As to the cost, the FPC held that internal costs for patent attorneys employed with the group of companies of the defendant cannot be considered at all; these costs are not necessary expenses according to Art. 3 CostR-PatC.
Der von der Beklagten geltend gemachte patentanwaltliche Aufwand ist durch die Inanspruchnahme von konzern-internen Dienstleistungen entstanden und ist damit als interner Aufwand zu qualifizieren, für den unter dem Titel notwendige Auslagen kein Raum ist.
In addition to injunctive relief, the defendant has also been ordered to provide accounting on the infringing acts. This right is based on Art. 66 lit. b PatA. That’s always annoying for parties held to infringe. Here, the defendant had requested the court to take appropriate measures to ensure that its legitimate interests are not infringed, such as business secrets (Art. 156 CPC). However, the legitimate interest remained unspecified. In any event, the FPC now clearly held that the right based on Art. 66 lit. b PatA cannot be limited by procedural measures. Based on the information to be provided within 60 days after the decision has become final, the plaintiff will next have to quantify his claim; Art. 85(2) CPC.
Reported by Martin WILMING
Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”
The assessment of accessibility is not to be confused with the assessment of inventiveness. Starting point for the assessment of accessibility is not the general state of the art, but the patent in suit. Therefore it is not to be assessed whether the replaced feature is inventive in view of the state of the art. It is rather to be assessed whether, starting from the teaching of the patent in suit, it is evident for the skilled person that the replaced feature has the same effect (r. 126.96.36.199).
(Clarification of the case law with respect to S2013_001, decision dated 21. März 2013)
The decision is a booklet of 82 pages and it will take me some more time to finish a post on all aspects of the decision. The main hearing took place on 14 September 2015; see this Blog here for some background information on the subject-matter at stake. But the highlight for sure is the headnote which is meant to clarify an important issue in the assessment of equivalence, i.e. the second question relating to accessibility (Auffindbarkeit). So I bring forward this part of the story.
The plain wording of the second question outlined in the hn of S2013_001 may well have caused some confusion. It reads as follows:
Werden die ersetzten Merkmale und deren objektiv gleiche Funktion dem Fachmann durch die Lehre des Patentes nahe gelegt?
Literally (and inofficially) translated:
Are the replaced features and their objectively same function rendered obvious by the teaching of the patent to the person of skill in the art?
Obviousness is a word that practitioners readily associate with assessment of inventive step. In any event, the FPC has now clarified that this must not be mixed up. According to the hn, the following is to be assessed instead (in the official English translation of the hn):
Starting from the teaching of the patent in suit, is it evident for the skilled person that the replaced feature has the same effect?
In the German language of the proceedings, the relevant section of the hn reads as follows:
Ist bei ausgetauschten Merkmalen die Gleichwirkung für den Fachmann bei objektiver Betrachtung ausgehend von der Lehre des Patents offensichtlich?
My first reaction was ‘Alright, got it, that’s the 2nd Schneidmesser question as applied in Germany, with mild Swiss tones.’ On a second thought, I do not think it is. It is a Urinal question. The reasons of the decision even make this clearer (r. 188.8.131.52, referred to in the hn; emphasis added):
Zu beurteilen ist, ob, wenn die Merkmale ausgetauscht sind, die Gleichwirkung für den Fachmann bei objektiver Betrachtung unter Berücksichtigung der Lehre des Patents offensichtlich ist.
Inofficially translated into English:
It is to be determined whether, once the features are replaced, the same effect is evident for the person of skill in the art when objectively assessed in consideration of the teaching of the patent.
While the hn requires “starting from the teaching of the patent” (“ausgehend von der Lehre des Patents”), the reasons only take the teaching of the patent into consideration (“unter Berücksichtigung der Lehre des Patents”). But when doing what? In light of the reasons, this test compares two already given situations (one with the replaced/claimed feature and another one with the replacing feature) and only then asks whether the same effect is evident. To the contrary, the wording of the concise, yet finely chiselled second question in Germany is (see Schneidmesser I, BGH X ZR 168/00, r. 3a, emphasis added):
Was the person skilled in the art enabled by his expertise to find the modified means as having the same effect?
Haben seine Fachkenntnisse den Fachmann befähigt, die abgewandelten Mittel als gleichwirkend aufzufinden?
This clearly asks for the capability of the person of skill in the art to actually find the replacing means (in their capacity to have the same effect). Schneidmesser does not make a comparison of two already given scenarios and – only based theron – an assessment of whether or not the same effect is evident. And Prof. Dr. Meier-Beck (a member of the panel of judges that has issued the Schneidmesser decision) emphasizes that this is intentional:
This question is all about excluding those cases in which an inventive step was necessary to find the modified means as having the same effect. If that is the case, i.e. if the means having the same effect were not obvious to the person skilled in the art, they are outside the scope of the patent (BGH Oct. 24, 1986, Case No. X ZR 45/85, (Befestigungsvorrichtung [Fixing Device])). Because what the person skilled in the art is not able to find and to do based on the patent and helped by his or her knowledge in the art, is not to be granted to the patentee (BGH May 15, 1975, Case No. X ZR 35/72, (Ski-Absatzbefestigung [Ski Heel Attachment])). Else, the fundamental bargain underlying most patent regimes is violated — i.e. that a patent is an exclusive right granted for a limited period in exchange for certain technical teaching made available by the patentee to the public, by publication of the patent.
(Meier-Beck in Pumfrey, Nicholas; Adelman, Martin J.; Basheer, Shamnad; Dave, Raj S.; Meier-Beck, Peter; Nagasawa, Yukio; Rospatt, Maximilian; and Sulsky, Martin (2009) “THE DOCTRINE OF EQUIVALENTS IN VARIOUS PATENT REGIMES — DOES ANYBODY HAVE IT RIGHT?”, Yale Journal of Law and Technology: Vol. 11: Iss. 1, Article 9. Available here.)
But let’s again have a look at the reasons of the decision S2013_001, r. 17.2: In light of various Supreme Court decisions (BGE 97 II 85, r. 1; BGE 125 III 29, r. 3b; BGE 115 II 490, r. 2a), it was held that it has to be asked whether the replacing means are rendered obvious by the teaching of the patent for the person of routine skill in art, “henceforth referred to as the second question” (“nachstehend als zweite Frage bezeichnet”). In the next paragraph, the second Schneidmesser question is recited and it was held, that this question equates with the aforementioned second question (“entspricht obiger zweiter Frage”). This is why I felt that the Swiss approach to the second question actually resembles Schneidmesser. With the reasons of the present decision at hand, I doubt that this is the case.
It may well be that the answers to the second Schneidmesser question and the Urinal question are the same in some situations. But in my perception this is not necessarily the case. Assume that the replacing feature is taken from a completely different field of technology. Once it is on the table, it may well be the case that the same effect is evident for the person of routine skill in the art, in consideration of the teaching of the patent. But would he ever have actually found it (not only as having the same effect, but maybe even at all)? I do not think that the Urinal question clearly addresses this. Instead, it seems to me that the Urinal question is more along the lines of the second Improver question in the U.K. ( F.S.R. 181; Chancery Division (Patents Court), 16 May 1989), which reads as follows:
Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art?
I remain keen to learn how the Urinal question will henceforth be applied in practice.
1. Art. 72 PatA: Request for an order to cease and desist a patent infringement.
For a request for an order to cease and desist a patent infringement to be admissible it must contain a detailed description of the incriminated act. This description must be sufficiently specific such that a purely factual examination is sufficient to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous technical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements (r. 17).
2. Art. 26 PatA; Art 8 CC: Burden of allegation if a party raises a ground for nullity of a patent.
If a party raises a ground for nullity the assessment of which involves the skilled person [and] his common general knowledge, this party bears the corresponding burden of allegation, i.e. it must specifically name the skilled person (defined according to education and/or profession) and his common general knowledge (in particular the extent of the pertinent technical knowledge supposed to be known to him at the relevant date). If such a specific allegation is not put forward the ground for nullity will be dismissed (r. 19-20 and 31-32).
3. Art. 125 PatA; Art. 51PatA: Prohibition of double patenting.
The loss of effect of the Swiss patent due to the existence of a European patent for the “same invention” with the same effective date according to Art. 125(1) PatA is subject to the condition that the same technical teaching is protected by the claims of both patents (r. 37).
1. Procedural History
Richemont International S.A. had sued De Grisogono S.A. for patent infringement before the Civil Court of the canton of Geneva on 15 July 2008. The defendant delivered his answer on 04 November 2008 (the year 2011 given in the decision on p.6 is evidently a typo), argued for non-infringment, lodged a counterclaim for nullity of the patent in suit and requested that the infringemenent action be held an act of unfair competition. As an auxilliary measure, the defendant requested to appoint an expert. With his reply of 30 January 2009, the plaintiff inter alia requested that three experts were to be appointed. The rejoinders were filed on 27 April 2009 (defendant) and 12 July 2009 (plaintiff), respectively.
Finally, three experts were appointed: René BESSON (horologist), Ronald NOLL (patent attorney) and René ADDOR (horologist). BESSON and NOLL submitted a joint opinion on 05 April 2011; ADDOR completed his opinion on 13 June 2011.
The Civil Court of Geneva decided to transfer the case to the Federal Patent Court on 26 January 2012. The parties were invited on 23 October 2012 to comment on the two expert opinions. They filed their comments on 14 January 2013, and the plaintiff put the competence of the FPC into doubt. The main hearing took place on 05 November 2013 (extra muros in Fribourg).
2. The patent in suit
The patent in suit is CH 695 712 A5 of Richemont International S.A.; for bibliographic details and legal status, see Swissreg. In brief, independent claim 1 pertains to a mechanism to display a date from two separate numbers, comprising
a first annulus (1) with a first set of digits and a toothing at its inner circumference to drive it;
a mobile (9,10) with a plate (9) comprising a second set of digits and a part (10) with a multitude of teeth and wherein the plate (9) is partially arranged on top of the first annulus; such that at each stable position of the first annulus (1) and the mobile (9,10) a digit of the first annulus (1) and a digit of the mobile (9,10) are arranged side by side in a frame or two parts (2,13) of a frame;
characterized in that the mobile (9,10) is pivot-mounted outside of the first annulus (1) and wherein the first annulus (1) comprises a toothing (14) also at its outer circumference, interacting with the teeth of part (10).
For ease of reference, an illustrative figure and the original claim wording in French language is given below:
The mechanism can be best understood on the basis of Fig. 1-3 of CH 695 712 A5 (excerpts of which are given below) showing the sequence of a date switch:
An annotated picture of one of these watches had been filed by the plaintiff, for illustrative purposes:
4. What has been decided
4.1 Competency of the FPC
According to Art. 41 PatCA, the Federal Patent Court shall, where it is competent, adjudicate in cases that are pending before the cantonal courts, provided that the main hearing has not yet been held. The procedure of taking evidence had not yet been concluded, and no main hearing had taken place. Thus, the cantonal court referred the case to the FPC.
On the subject matter of the case, the competency of the FPC is evident (Art. 26 PatCA).
4.2 Wording of the requests
The wording of the request essentially recites the wording of the only independent claim 1 of the patent in suit. Don’t assume that this is typically the case. Formal requirements for such requests are harsh and sometimes difficult to meet in view of the decision 131 III 70 of the Supreme Court. For a request for an order to cease and desist a patent infringement to be admissible it must contain a detailed description of the incriminated act. This description must be sufficiently specific such that a purely factual examination is sufficient to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous tehcnical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements. This was held to be the case here. (But beware: It is more an exception than the rule that recitation of the claim wording is sufficient.)
4.3 On the merits of the patent
Besides the alleged infringment of CH 695 712 A5 (see 4.4, below), the FPC had to deal with validity issues since the defendant raised a counterclaim of invalidity (see 4.3.1 to 4.3.4, below). Note that Swiss patent applications are only formally examined but not on the merits, i.e. for novelty and inventive step. (A pre-examination on the merits had been introduced for certain inventions in the textile and watch industry with an amendment of the PatA in 1954, but this has been abolished again in 1996.)
4.3.1 Alleged undue extension of subject-matter
The amendments carried out during prosecution are discussed in the decision on the basis of the claim wording with tracked changes:
The amendments were found to be clearly and unambiguously derivable from the documents as filed. In any case, this would not have been a ground for nullity under Art. 26(1) c PatA, but would rather have resulted in a shifted filing date (Art 58(2) PatA effective until June 30, 2008; BGE 4A_109/2011 / 4A_111/2011, r. 4.1).
As a sidenote, the FPC emphasized that it is the understanding of the person of routine skill in the art that counts for assessment of the question of whether or not an amendment goes beyond of what can be clearly and unambiguosly derived from the application as filed. Thus, the person of routine skill in the art is to be identified beforehand, typically by means of his profession and/or education. Providing this definition is an obligation of the party who raises an argument or counterclaim that relies on the knowledge of the person of routine skill in the art. The defendant did not do so but rather only gave a general definition without any context to the technical matter at stake.
The defendant alleged a lack of novelty of the patent in suit over the following documents:
As can be concluded from Fig. 1 of the Valjoux patent (below, for ease of reference), the disk carrying the first series of digits (the upper disk in fig. 1) is not in the form of an annulus (couronne). Consequently, there is also no disclosure of an inner and outer toothing on the (missing) annulus. Novelty over the Valjoux patent was thus acknowledged.
Piguet discloses an annulus for the first series of digits, but without any outer toothing (but rather only two inner toothings). Moreover, the mobile (carrying the digits 0-3) is not is pivot-mounted outside of the annulus. Novelty over the Piguet patent was thus acknowledged. See Fig. 2 of the Piguet patent below, for ease of reference:
This piece of prior art was not alleged by the defendant in order to challenge novelty or inventive step (but rather only in the context of the alleged undue extension of subject matter). Nevertheless, ADDOR had discussed this document also for patentability issues — and the plaintiff did not object. Anyhow, novelty over the Jaeger-Le Coultre patent was acknowledged by the FPC: The mobile (carrying the digits 1-3) is not pivot-mounted outside of the annulus. Moreover, there is no outer toothing on the annulus that interacts with the toothing of the mobile. See Fig. 1 of the Jaeger-Le Coultre patent below, for ease of reference:
iv) JP 44-20619 (Aichi Tokai Denki)
This document had not been relied on by either of the parties. ADDOR had identified it in a search which had not been authorized or instructed by the FPC. Even worse, he came up with this document only two months after he had initially provided his opinion. The plaintiff could have objected against consideration of this document, but did not do so. Anyhow, novelty over the Aichi Tokai Denki patent was acknowledged for essentially the same reasons as outlined for the Valjoux patent above: It does not disclose an annulus being driven by an inner toothing and interacting with a mobile by means of an outer toothing.
Unfortunately, I could not find a pdf of this document, but at least the figure given in the decision is shown below for illustration purposes:
4.3.3 Inventive step
The FPC assessed the inventive merit on the basis of the so-called problem-and-solution-approach (see EPO Guidelines for Examination, G-VII, 5). The objective technical problem to be solved was identified in a simplification of the mechanism and a reduction of the number of pieces (see paragraphs  and  of CH 695 712 A5). There was no apparent incentive for the person of routine skill in the art to arrive at the claimed invention in an obvious manner; thus, the could-would-approach failed and inventive step was acknowledged.
4.3.4 Double patenting
The plaintiff is also owner of EP 1 296 204 B1. The European application and the Swiss patent CH 695 712 A5 had been filed on one and the same day, with apparently the same documents. However, the resulting scope after prosecution was different in both cases (I did not yet make a detailed comparison of the claim wordings). Thus, the FPC held that both patents are not directed to the same invention and therefore Art. 125 PatA does not apply.
The report BESSON/NOLL came to the conclusion that the patent in suit is infringed. From the report ADDOR, the FPC took the same conclusion (albeit implicitly). Taking both reports into due consideration, the FPC followed the conclusions drawn by BESSON/NOLL.
The primary counter-argument of the defendant was that the (let’s call it) structure 3 in the figure below was not an external toothing (“denture périphérique externe” in the original claim wording in French).
The ADDOR report provided the following illustration of the technical term tooth (dent; left side) and gudgeon (ergot; right side):
The FPC was not at all convinced that the so-called ergot was not a tooth. In fact, even in EP 1 612 628 B1 itself the structure 3 is referred to as a tooth (dent); see paragraph . The FPC held that also a single tooth constitutes a toothing according to the patent in suit.
5. In a nutshell
The defendant was ordered to cease and desist from using the invention, and to report on the sales figures of the infringing devices within a deadline of 60 days. The counterclaims of the defendant were dismissed. The decision can be appealed within 30 days.
Art. 6 EMRK; Art. 29(1) and (2) BV:
The parties may be summoned to a hearing to safeguard their mandatory right to be heard and in order to expedite the proceedings.
(Non-official translation from German into English language)
But what does that mean in pratice? Can an exchange of replies based on the mandatory right to be heard go on for ever? It can be difficult for a court to come up with a decision when parties don’t stop writing.
In the present matter, the defendant had accepted the plaintiff’s claim on 26 June 2013. The plaintiff filed a submission on 22 July 2013 (inter alia pertaining to the costs). The defendant replied on 09 August 2013. The FPC now took a pragmatic approach to effectively take such a series of replies to an end: The plaintiff was obliged to indicate by no later than 29 August 2013 whether it is intended to again reply. If so, the parties would be summoned to an oral hearing in order to conclude the exchange of positions.
Here, defendant had sold allegedly infringing power plug adapters via the internet portal gudi.ch on 24 December 2012. Some traces can still be found on the internet:
The plaintiff requested injunctive relief in first place, and further information and accounting in an action by stages for the recovery of profits of the defendant originating from illegitimate sales of infringing products.
No technical matters are at stake in the decision. The defendant neither replied to any pre-litigation correspondence nor did he pick up the registered letter of the FPC with the order to provide his reply to the writ. Even a grace period under Art. 223(1) CPC had lapsed to no avail (even though the defendant apparently had called the FPC and was informed about the further course of the proceedings). The ostrich approach to bury the head in the sand failed: Since neither validity of the patent nor the infringement was disputed, the FPC was in a position to immediately accept the claim for injunctive relief. Further, the defendant was obliged to provide the requested information and accounting within 60 days after the decision will have become final.
This case pertains to power plug adapters that allegedely infringe EP 1 393 417 B1. An essential feature is that various plugs can be slid out of a housing, but only one at a time; cf. Fig. 8 and 9 of the patent in suit (click to enlarge):
The plaintiff WorldConnect AG sells power plug adapters according to the patent in suit under the brand SKROSS®. The allegedly infringing power plug adapter is identified as “CH-685” in the decision, offered / sold by the defendant. An article with this identifier can still be found on the website pearl.ch, as well as the manual, but it is explicitly no longer available in Switzerland (click to enlarge):
The plaintiff confronted the defendant with the alleged infringement on July 1, 2011. On September 14, 2011, the defendant complied and submitted a cease and desist agreement. Moreover, the defendant provided some details on suppliers and quantities of received / sold items with letter of October 6, 2011. Finally, with letter of November 30, 2011 the defendant declared that 428 items had effectively been sold (after deduction of returns). The total turnover amounted to CHF 3’922,99. The defendant then paid the plaintiff a lump-sum of CHF 2’500,–, “in order to not end up in a law suit” (voilà, here we are …). An additional amount of CHF 5’346,– for incurred costs of an assisting patent attorney was not compensated; in the defendant’s view, these costs could have been avoided by the plaintiff.
The plaintiff filed the suit on June 5, 2012 as an action by stages (Stufenklage), in accordance with Art. 85 CPC: Information and accounting for evidence was requested in first place, to enable the plaintiff to quantify the amount being requested in the main request, i.e. the recovery of profits of the defendant originating from illegitimate sales of infringing products. The duty of disclosure is based on Art. 66 lit. b of the Federal Act on Invention Patents (note that this duty is not only given vis-a-vis the court as the mere wording of Art. 66 lit. b of the Federal Act on Invention Patents might suggest, but also vis-a-vis the patentee; cf. Heinrich, PatG/EPÜ, 2nd ed., Bern 2010, para. 7).
The defendant submitted that the request for information and accounting was unfounded inasmuch as such information was already provided. Further information could only be provided on the basis of the electronic merchandise planning and control system. The defendant had offered that an independent accountant could review and approve the electronic data, but the plaintiff had not been responsive to this offer. In essence, the defendant alleged that the plaintiff’s request for information and accounting was now in bad faith, in view of the defendant’s prior offer.
In its decision, the FPC summarizes that neither the right of action of the plaintiff (as the exclusive licensee) nor the patent infringement as such was contested. It was not even contested that a profit had been made by the defendant; only the actual amount was in dispute. Thus, all prerequisites for the defendant’s duty of disclosure were given — which is an obligation to deliver (by the defendant), not an obligation to collect (by the plaintiff). Consequently, the defendant’s argument failed. Subsequent assessment of the disclosed documents is a matter of consideration of evidence by the court.
With respect to the extent of the duty of disclosure, the FPC stated that the disclosed information needs to put the plaintiff in a position to quantify the amount to be demanded in the main request. The defendant did not object in detail to the requests for information and accounting. The defendant only submitted that individual sales in the shop cannot be allocated to specific customers; this was acknowledged by the FPC. Moreover, the FPC corrected an obvious error in the request (“manufactured by” was replaced by “sold by”, since it was not alleged by the plaintiff that the defendant had manufactured the infringing items himself), and some redundancies were omitted.
The order on information and accounting was granted essentially as requested, with threat of punishment under Art. 292 Criminal Code (Art. 236(3) in conjunction with Art. 343(1) lit. a CPC). As an exception to the rule, a decision on the costs of this partial decision will be taken in the final decision.