Saurer’s HeatCut system held to infringe Lässer’s EP 1 983 083 B1

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.

1.   Nullity

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 [0006] of the patent in suit. This paragraph [0006] 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 [0006] of the patent is referred to as D4 in the decision. The decision casts some doubt on whether this paragraph [0006] 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 with US 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.

2.   Infringement

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 [0017] of EP’083 for further details on the spacer.

EP 1 983 083 B1, Fig. 3 and 3a
EP 1 983 083 B1, Fig. 3 and 3a

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:

O2014_009_featured_image
Front page illustration of HeatCut brochure

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.

Illustration of the support
Illustration of the support

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

BIBLIOGRAPHY

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

Lässer AG Stickmaschinen ./. Saurer AG

Subject(s):

  • Infringement / claim construction
  • Spacer of embroidery machine

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • André ROLAND
  • Dr. Christian HILTI

Reporting judge:

  • Dr. Tobias BREMI

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of claimant:

  • Dr. Andri HESS (Homburger)
  • Philip SCHNEIDER (SMS)
  • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer)
  • Delia FEHR-BOSSHARD (Vischer)
  • Arndt HAMANN (Saurer, inhouse), assisting in patent matters
  • Bernhard RÜBER (Saurer, inhouse), assisting in patent matters

FULL-TEXT

Download (PDF, 8.5MB)

Would you like to be notified of new posts? Here you go.

Some thoughts on the urinal question (O2014_002)

Case No. O2014_002 ¦ Decision of 25 January 2016 ¦ “Urinalventil: Teilweise Gutheissung Patentverletzung, Äquivalenz, Auskunft und Rechnungslegung, Verjährung”

HEADNOTE

Art. 109 PatA; Art. 69 EPC; Protocol on the Interpretation of Article 69 EPC of 05 October 1973 as revised by the Act revising the EPC of 29 November 2000; Art. 66 para. 1 lit. a PatA: imitation (equivalence), accessibility.

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. 6.5.2.4).
(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. 6.5.2.4, 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. ([1990] 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.

Reported by Martin WILMING (to be cont’d)

— BIBLIOGRAPHY —

Case No. O2014_002 ¦ Decision of 25 January 2016 ¦ “Urinalventil: Teilweise Gutheissung Patentverletzung, Äquivalenz, Auskunft und Rechnungslegung, Verjährung”

Daspaco AG ./. Von Allmen AG

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Christoph GASSER
  • Dr. Ralph SCHLOSSER
  • Werner ROSHARDT

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Matthias STÄDELI (Rentsch)
  • Dr. Demian STAUBER (Rentsch)
  • Dr. Jens OTTOW (Rentsch), assisting in patent matters
  • Dr. Alfred KÖPF (Rentsch), assisting in patent matters

— FULLTEXT —

Download (PDF, 802KB)

— BE ON THE KNOW —

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

Large date indication of De Grisogono’s “Instrumento Grande”: Patented, yet held to infringe

De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)

Case No. O2012_033 ¦ Decision of 30 January 2014 ¦ “Conclusions; fardeau d’allégation; double protection”

HEADNOTE

(Official version in English language)

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:

O2012_033_illustration_patent_in_suit

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:

Excerpts from Fig. 1 (left), 2 (middle) and 3 (right) of CH 695 712 A5
Excerpts from Fig. 1-3 of CH 695 712 A5
3.  The incriminated watches

Two de GRISOGONO watches were incriminated, i.e. Instrumento Grande and Instrumento Grande Open Date. A key feature of both these watches is the large date indication (at 6-position in the pictures below):

De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)
Instrumento Grande (left)
Instrumento Grande Open Date (right)

An annotated picture of one of these watches had been filed by the plaintiff, for illustrative purposes:

instrumento_grande_open_date_-_annotated
Instrumento Grande Open Date, annotated by the plaintiff (taken from p. 5 of the decision).
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:

Amendments CH 695 712

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.

4.3.2  Novelty

The defendant alleged a lack of novelty of the patent in suit over the following documents:

i)  CH 316 461 (Valjoux)

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.

Fig. 1 of CH 316 461 (Valjoux)
Fig. 1 of CH 316 461 (Valjoux)

ii)  CH 689 601 A5 (Piguet)

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:

Fig. 2 of CH 689 601 A5 (Piguet)
Fig. 2 of CH 689 601 A5 (Piguet)

iii)  EP 529 191 B1 (Jaeger-Le Coulte)

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:

Fig. 1 of EP 529 191 B1 (Jaeger-Le Coultre)
Fig. 1 of EP 529 191 B1 (Jaeger-Le Coultre)

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:

Figure of JP 44-20619 (Aichi Tokai Denki)
Figure of JP 44-20619 (Aichi Tokai Denki)
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 [0005] and [0006] 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.

4.3.5  Infringement

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).

Fig. 1 of EP 1 612 628 B1
Fig. 1 of EP 1 612 628 B1 (De Grisogono); this mechanism is embodied in the incriminated watches.

The ADDOR report provided the following illustration of the technical term tooth (dent; left side) and gudgeon (ergot; right side):

Illustrations of technical terms by the expert Addor: dent (left); ergot (right)
Illustrations of technical terms by the expert Addor: dent (left); ergot (right)

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 [0010]. 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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_033 ¦ Decision of 30 January 2014 ¦ “Conclusions; fardeau d’allégation; double protection”

Richemont International S.A. ./. De Grisogono S.A.

Subject(s):

  • Infringement and nullity
  • Unfair competition
  • “Couronne dentée”

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

  • Maître Michel MUHLSTEIN (JMLP)

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 723KB)

The mandatory right to be heard, again and again(?)

Case No. O2013_004 ¦ Decision of 15 August 2013 ¦ “Auszug aus dem Entscheid des Präsidenten des Bundespatentgerichts vom 15. August 2013”

HEADNOTE

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)

As outlined in an earlier post, parties have a mandatory right to be heard (“unbedingtes Replikrecht”); no time limit needs to be set by the Court, but one has to act quickly (cf. BGE 138 III 252, r. 2.2; BGE 133 I 98, r. 2.2 and a memorandum of the Supreme Court).

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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_004 ¦ Decision of 15 August 2013 ¦ “Auszug aus dem Entscheid des Präsidenten des Bundespatentgerichts vom 15. August 2013”

(not identified) ./. (not identified)

Subject(s):

  • (not identified)

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

Download (PDF, 11KB)

Ostrich approach failed, injunctive relief granted

Case No. O2013_007 ¦ Partial decision of 14 August 2013 ¦ “Teilurteil Unterlassung, Auskunft und Rechnungslegung”

Further to the partial decision of 13 February 2013 in O2012_036 (WorldConnect AG ./. Pearl Schweiz GmbH) this is yet another case on the basis of EP 1 393 417 B1. Apparently, this patent is heavily litigated.

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:

gudi

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.

The patent in suit is part of a larger patent family. From a routine check of the European patent register, it is apparent that the European patent has already lapsed in several countries. Noteworthy, the European patent is subject to a nullity suit in Germany; cf. the patent register at the DPMA (Germany) and the decision 1Ni29/12(EP) of the Federal Patent Court in Germany, issued 27 February 2013. Claims 1, 2, 3 and 6 (inasmuch as it refers back to one of claims 1-3) were held invalid in view of the prior art documents DE 24 14 203 C3, EP 0 156 076 B1 and US 5,791,921. For the time being, I could not clarify whether this decision has been appealed or not.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_007 ¦ Partial decision of 14 August 2013 ¦ “Teilurteil Unterlassung, Auskunft und Rechnungslegung”

WorldConnect AG ./. John Rusillon, Easy-Tech, Rusillon

Subject(s):

  • Patent Infringement
  • Damages
  • Recovery of profits

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Dr. Mark SCHWEIZER (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (none)

Full text of the decision right here:

Download (PDF, 107KB)

Request for information and accounting granted in an action by stages

Case No. O2012_036 ¦ Partial decision of 13 February 2013 ¦ “Teilurteil Auskunft und Rechnungslegung nach abgegebener Unterlassungserklärung”

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):

Figures 8 and 9 of <a href="http://www.patentlitigation.ch/wp-content/uploads/2013/02/EP1393417B1.pdf" target="_blank">EP 1 393 417 B1</a>

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):

CH-685 power plug adapter
CH-685 Travel Adapter
Source (visited February 27, 2013):
http://www.pearl.ch/ch-a-CH685-5452.shtml

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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_036 ¦ Partial decision of 13 February 2013 ¦ “Teilurteil Auskunft und Rechnungslegung nach abgegebener Unterlassungserklärung”

WorldConnect AG ./. Pearl Schweiz GmbH

Subject(s):

  • Patent infringement

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. rer. nat. Tobias BREMI (Referent)
  • Dr. iur. Mark SCHWEIZER
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Hans-Ulrich Pfeiffer (Pfeiffer Rechtsanwälte, Freiburg (Germany)), with mailing address at the defendant in Switzerland