Bayer’s blockbuster Xarelto approaching the patent cliff, competition is getting tougher

Reading time: 5 minutes

Case No. S2023_006 | Judgment of 25 July 2023 | ‘Rivaroxaban / Acino’

WHAT YOU NEED TO KNOW

Bayer’s Swiss SPC on rivaroxaban expires on 17 June 2024.

Acino’s out-licensing offer (a service package that includes all regulatory / approval work and manufacturing / packaging) for rivaroxaban does not constitute an imminent threat of market entry of a potential licensee. Bayer’s request for an ex parte PI was accordingly dismissed.

Acino has nevertheless taken rivaroxaban off its list of compounds available for out-licensing, for the time being.

rivaroxaban

This case is about rivaroxaban, a prescription blood thinner. It is used to treat deep vein thrombosis (DVT) and pulmonary embolism (PE). It’s a pretty interesting small molecule that acts as an anticoagulant; it has been the first orally active direct factor Xa inhibitor.

You may grab und turn it in the illustration below to get an idea of its structure in 3D:

Rivaroxaban is marketed by Bayer as Xarelto®. It is only in the U.S. that Bayer has out-licensed the drug to a subsidiary of Johnson & Johnson. Direct sales and license income from J&J make Xarelto® Bayer’s best-selling drug, by far. But sales are declining:

Patents and competition
Bayer logo

The basic compound patent EP 1 526 132 B1 has lapsed in December 2022, but the Swiss SPC C01261606/01 is still in force until 17 June 2024. EP 132 and the corresponding SPC were apparently not challenged by now; validity of the corresponding US 7,157,456 B2 has been confirmed in inter partes proceedings. Accordingly, Bayer’s Xarelto® is currently the only rivaroxaban containing pharmaceutical listed in Compendium. However, quite some competitors have already obtained their MAs for rivaroxaban (Nobel, Sandoz, Spirig and Mepha):

MAs for rivaroxaban (31 July 2023)

Note that Bayer has yet another patent on a dosage regime of ribaroxaban; EP 1 845 961 B1 still runs until until January 2026 (see Swissreg). EP 961 has been maintained in EPO proceedings lately, but is under fire in national proceedings.

acino’s out-licensing offer
Acino logo

Bayer had noted that Acino was promoting rivaroxaban on their website as a new product that was available for out-licensing. Acino’s service of out-licensing apparently comprises the development and subsequent licensing of an entire medicinal product dossier. In addition to the production and delivery of the pre-packaged pharmaceutical, Acino also obtains all necessary authorisations, approvals, etc. The out-licensed products are manufactured in the Basel region. The out-licensing offer comes along with the following footer:

Products which are subject to patent protection are offered with respect of the prevailing patent laws. No sales, prior to the expiry date of valid patents, are foreseen to countries where patents are in force.

Further, Acino has filed its MA request with Swissmedic on 21 June 2023.

Earlier this year, i.e., on 10 June 2023, Acino’s website had indeed listed rivaroxaban as one of the products available for out-licensing:

Acino’s products for out-licensing (10 June 2023)

As per today, rivaroxaban is not listed on that website anymore. Likewise, Acino’s out-licensing brochure of April 2023 mentioned rivaroxaban, while the current version of July 2023 does not.

What’s been decided

The judgment holds that Acino does not (yet) offer any pharmaceuticals containing rivaroxaban, and that it is not credible that market entry is imminent. In practice, not even the granting of a MA by Swissmedic indicates imminent market entry since the MA only gives the right to market the respective pharmaceutical, but there is no corresponding obligation to do so. It is quite possible, and indeed common, to apply for a MA before the final clarification of the IP situation, so that the sale can start promptly after clarification of the IP situation.

Specifically, Bayer could not show any concrete evidence that potential customers of Acino’s out-licensing programme would not respect Bayer’s patents. The abstract threat that a holder of a MA will enter the market before the expiry of the term of protection of relevant IP rights always exists, but this is not sufficient to establish a credible threat of actual infringement.

Accordingly, the President acting as single judge dismissed Bayer’s request for an ex parte PI.

✍ MW

BIBLIOGRAPHY

Case No. S2023_006 | Judgment of 25 July 2023 | ‘Rivaroxaban / Acino’

Bayer Intellectual Property GmbH
./.
Acino International AG
Acino Pharma AG

Single Judge:

    • Dr. Mark SCHWEIZER
  • Court Clerk:
    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

JUDGMENT

BASIC PATENT

PUBLICATION ON

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Imholz ./. Emil Gisler: Is coming up with inventions a side task of a sales rep?

Reading time: 6 minutes

Case No. S2023_001 | ‘Bitumen / asphalt recycling’
👉 Order of 15 February 2023
👉 Judgment of 11 April 2023

Environmental sustainability is a huge thing these days. It affects almost every industry. Even roadworks. Did you ever wonder what happens with waste asphalt? Formerly, it was dumped in landfill. Not so anymore. Recycling has arrived in this industry, too. One approach is to crush and screen the recovered asphalt, and to re-use it as gravel or in mixed products. The common disadvantage is that components get more and more fragmented / the fine portion increases. Further, the valuable bitumen is functionally lost.

Obviously, there is still room for improvement, and this is what the present case is all about.

GIPO logo

An employee of Emil Gisler AG Maschinenbau und Hydraulik (the defendant) made an invention pertaining to recycling of asphalt and bitumen, and reported this invention to his employer. This employee, Pius IMHOLZ, has meanwhile left Emil Gisler and founded his own company in order to commercialize this invention, i.e. Imholz GmbH (the plaintiff). But, here’s the issue: His former employer filed the respective patent application for this invention in their own name. It’s the Swiss patent application 70/2022 (still unpublished, but expected to be published in about a month; stay tuned!). Accordingly, it’s a classic dispute concerning the ownership of an invention and the respective patent application.

Swiss law is pretty clear with respect to employee inventions:

    • If an employee comes up with an invention in the course of his work for the employer and in performance of his contractual obligations, such an invention belongs to the employer without any further ado; Art. 332 para. 1 CO. These are so-called ‘Diensterfindungen’.
    • Further, the employer may also reserve the right to acquire inventions made by the employee in the course of his work for the employer but not in performance of his contractual obligations. These are so-called ‘Gelegenheitserfindungen’. This requires a written agreement. The employee must notify the employer of such inventions, and the employer must then inform the employee within six months if he wishes to acquire the invention or release it to the employee. See Art. 332 paras. 2 and 3 CO.

To date, the facts are only told by the plaintiff. (Clearly, defendant did not confirm plaintiff’s summary; they reserved the right to put everything into perspective in main proceedings. They just chose their battles wisely: A register ban will hardly ever be denied, anyway.) So, this is what we know for now: Pius IMHOLZ informed his employer about the existence of his invention on 25 October 2021, and disclosed the details thereof in early November 2021. In co-operation with patent attorneys a draft patent application was compiled, the content of which was approved by Pius IMHOLZ on 20 December 2021. On the same date, at the latest, Pius IMHOLZ made clear that he did not intend to give away (t)his invention for free. The defendant (more precisely, their attorneys-at-law since the filing receipt was apparently addressed to them) nevertheless filed the patent application in their own name on 25 January 2022.

The parties could not reach an out of court settlement since then, which is why plaintiff went to court. In particular, the parties dissent about whether the invention at stake is a ‘Diensterfindung’ in accordance with Art. 332 para. 1 CO. Note that Pius IMHOLZ was employed as a sales representative, not in R&D. Still, defendant claims that coming up with the invention was part of Pius IMHOLZ’s side tasks as sales representative.

In co-pending main proceedings (case no. O2023_002), Imholz seeks assignment of the patent application. The present summary proceedings were all about a register ban. With an ex parte order of 15 February 2023, the President acting as single judge held that the invention at stake was quite likely a ‘Gelegenheitserfindung’. In the absence of any written agreement in the sense of Art. 332 para. 2 CO on file, a register ban was issued. The register ban was confirmed after the defendant had been heard, with judgment of 11 April 2023.

A closer look a the technology

It appears that GIPO began to showcase its asphalt competence in 2021, e.g. when plant no. 1’000 was commissioned in August 2021 (mentioning that bitumen is separated from stone, without breaking the stone), and with an advertisement in asphalt 5/2021 (published in August 2021, too):

 

A hyperlinked category ‘Asphaltaufbereitung’ on GIPO’s website was archived for the first time when crawled on 28 December 2021; the respective hyperlink itself was crawled only on 29 January 2022 for the first time (i.e., a few days after the filing date), with a brochure about GIPO’s asphalt processing / recycling technology.

Here’s how GIPO currently advertises its approach to bitumen / asphalt recycling:

It will be interesting to see (around end of July 2023) what the invention of the Swiss patent application 70/2022 is all about.

✍ Sarah HENTSCHEL / Martin WILMING

BIBLIOGRAPHY

Case No. S2023_001 | ‘Bitumen / asphalt recycling’
👉 Order of 15 February 2023
👉 Judgment of 11 April 2023

Imholz GmbH
./.
Emil Gisler AG

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Dr. Cyrill RIEDER (FMP)
    • Dr. Peter WALSER (Frei), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Nicola BENZ (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

JUDGMENT

EX PARTE ORDER

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Spirig’s sitagliptin / metformin fixed-dose combination: Launch failure

Reading time: 6 minutes

Case No. S2022_010 | ‘Sitagliptin Metformin’
👉 Order of 16 January 2023
👉 Judgment of 27 March 2023

MSD logo

Sitagliptin is one of the best selling treatments for type II diabetes; it is sold by MSD as Januvia® (Swissmedic market authorization no. 57863). Sitagliptin is often used in combination with Metformin, a first line anti-diabetic medication. The fixed-dose combination is sold by MSD as Janumet® (Swissmedic market authorization no. 58450).

Putting it simple, metformin reduces the absorption of sugar from the stomach, reduces the release of stored sugar from the liver, and improves the use of sugar in the body. Sitagliptin helps to make the pancreas release more insulin. It also signals the liver to stop producing sugar when there is too much sugar in the blood.

MSD’s full year 2022 financial report acknowledges «lower sales of Januvia and Janumet, primarily reflecting lower demand in Europe as a result of generic competition.» Combined sales dropped by 15%, from USD 5,288 bn (2021) to 4,513 bn (2022).

MSD held two SPCs in Switzerland, i.e.

    • C01412357/01 for the fixed-dose combination of sitagliptin and metformin (granted 31 December 2009, lapsed 7 April 2023); and  
    • C01412357/02 for sitagliptin as such (granted 23 November 2021 as a paediatric extension, lapsed on 4 January 2023).

Both SPCs were based on EP 1 412 357 B1 (lapsed 5 July 2022; see EPO Register and Swissreg).

Spirig logo

Helvepharm, Sandoz and Mepha chose to enter the market with the fixed dose combination only in April 2023, while Spirig (member of the Stada group of companies) apparently took that step already in January 2023 when C01412357/01 was still in place ; see Compendium.

Here’s what happened:

When Spirig had obtained the Swiss market approval for the fixed-dose combination, MSD requested them to confirm that they will respect the two SPCs. Spirig confirmed that it would respect the one for sitagliptin as such, but refused to confirm the same for the SPC on the fixed-dose combination, because the latter was invalid, in their view.

On that basis, MSD sought preliminary injunctive relief on 23 December 2022. The President acting as single judge dismissed MSD’s request for an ex parte PI with order of 3 January 2022 (unpublished). Essentially, it had been held that mere refusal to confirm that one respects an SPC does not mean that infringing acts are imminent:

This could have been it. But it wasn’t. Shortly thereafter, on 12 January 2023 when the inter partes PI proceedings were still ongoing, MSD informed the FPC and provided evidence that Spirig meanwhile had entered the market — and again requested an ex parte PI. This time, indeed, the President issued an ex parte PI on 16 January 2023, yet without reasons. On Spirig’s request, reasons for the ex parte PI were subsequently provided. Spirig did not dispute but rather even confirmed with their request for a reasoned decision that they had taken up commercialization of the fixed-dose combination:

Apparently, Spirig took from certain subsidiary considerations in the President’s (unpublished) order of 3 January 2023 that MSD’s right to an ex parte PI would be forfeited. But it wasn’t: New facts (infringing acts) gave rise to a new assessment by the President.

Turning now to the alleged invalidity of the fixed-dose SPC, the judgment holds that the (meanwhile overcome) ‘infringement test’ still applies to C01412357/01, in view of a Swiss Supreme Court decision of 2018; see this Blog here. What is more, the fixed-dose SPC was the first one to be granted in Switzerland. Accordingly, the President held that the Swiss fixed-dose SPC was prima facie valid.

The situation is different in some other countries, e.g. in Germany where the Federal Patent Court had revoked the fixed-dose SPC because it lacked a further ‘inventive advance’; see 3 Ni 2/20. Note, however, that the fixed-dose SPC was the second one to be granted in Germany. MSD’s appeal is currently pending at the German Supreme Court, with case no. X ZR 64/21.

My reading between the lines is that the Swiss Federal Patent Court does have a different understanding of the ECJ rulings on combination SPCs than the German Federal Patent Court. The FPC explicitly disagrees with Spirig’s pleadings to this effect:

But, hey, the ECJ rulings on SPCs are somewhat cryptic indeed, aren’t they? Accordingly, it comes as no surprise that the Markkinaoikeus of Finland in corresponding proceedings between MSD and Teva asked the ECJ for a preliminary ruling (case no. C-119/22); see the questions here. Maybe, we will soon get some clarification about ‘core inventive advance’, ‘central inventive step’ and/or ‘subject matter of the invention’ from the ECJ (hopefully, it’ll not be a ruling that raises more questions than it answers).

The ex parte PI that had been issued by the President was confirmed by a panel of three judges after Spirig has been heard, with judgment of 27 March 2023.

What is interesting on the precedural side is that MSD was not set a time limit for initiating main proceedings. The SPC lapsed earlier than the 30 days time limit, which is why the excercise was meaningless:

The judgment has not been appealed / is final.

✍ MW

BIBLIOGRAPHY

Case No. S2022_010 | ‘Sitagliptin Metformin’
👉 Order of 16 January 2023
👉 Judgment of 27 March 2023

Merck Sharp & Dohme LLC
./.
Spirig Healthcare AG

Single Judge (Order of 16 January 2023):

    • Dr. Mark SCHWEIZER

Panel of Judges (Judgment of 27 March 2023):

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Prof. Dr. Daniel KRAUS

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

Representative(s) of Defendant:

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

JUDGMENT

EX PARTE PI

BASIC PATENT

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Harry Winston is hunting after a patent application concerning a wristwatch with two or more cylinder

Reading time: 4 minutes

Case No. S2022_007 | Judgment of 6 January 2023 | ‘Cylinder watch’

With this judgment in summary proceedings the FPC imposes a register ban in view of an entitlement / assignment action brought by Harry Winston against two defendants, i.e. Creaditive and MHM. The patent application at stake is CH 717 766. Main proceedings are co-pending at the FPC; case no. O2022_001.

Harry Winston’s reputation mainly stems from the jewelry business, in particular relating to some of the most famous diamonds such as the Hope Diamond. Harry Winston meanwhile belongs to the Swatch group. This case, however, is about a patent application for a wristwatch. Well, not an ordinary one. It’s a somewhat special kind of wristwatch that has a plurality of cylinder. And with moving pistons in the cylinders. Like an engine, you know. If you have petrol running through your veins, you may be thinking of Daimler’s  ancient ‘Grandfather Clock’ right now. But that’s not what we’re talking about. First, it only had one cylinder; and second, it wasn’t really a clock.

To give you an idea of how that might look like, just have a look at the Timeburner of Miki Eleta. It exemplifies the principle of a piston moving in a cylinder to indicate the minutes. But it only has a single cylinder:

YouTube player

There will be lovers and haters of such watches, for sure. But whatever you think about it, it is pretty clear that with a plurality of cylinders indicating the minutes it might be hard to figure out at which cylinder one should look at a given time. The patent application offers a solution for this problem (that I would never have guessed existed).

I note that there had been a change with respect to the designation of inventors, i.e. Georg von Tardy has been delisted; see the A8 publication. Bernhard Lederer is currently listed as the only inventor; he is the founder of MHM and has single signatory power for Creaditive. It remains to be seen whether this correction of the designation of inventors somehow relates to the assignment / entitlement action. I would be surprised if it didn’t.

UPDATE 1 Feb 2023: I am indeed surprised now. The file wrapper does not support my assumption that the delisting of the inventor related to the court case. It appears to be a mishap in the Register.

Defendants had requested that the proceedings before the FPC be stayed pending the resolution of co-pending litigation in Geneva; case no. C/19553/2022 7 GSV V (no further information available to date). But the FPC did not spot a risk of conflicting judgments since the litigation in Geneva apparently only concerns the (allegedly insufficient) performance under a contract and restitution for an alleged overpayment. Staying proceedings was thus not considered appropriate; Art. 126 CPC.

In sum, a register ban has been imposed; see Swissreg. Further, the stay of main proceedings on the merits has been lifted.

✍ MW

BIBLIOGRAPHY

Case No. S2022_007 | Judgment of 6 January 2023 | ‘Cylinder watch’

Harry Winston SA
./.
(1) Creaditive AG
(2) MHM Manufacture de haute Horlogerie et Micromécanique SA

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Marcel EGGLER (KGG)

JUDGMENT

PATENT APPLICATION IN SUIT

IPI FILE WRAPPER
as received on 31 January 2023:

I have received the file wrapper in three parts; I have manually combined the first two parts above: The first part contained the first eleven pages; the second part the subsequent pages. The third part only contained the FPC judgment (not included in the document above).

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Lucentis biosimilar: First commercial use not (yet) imminent

Reading time: 9 minutes

Case No. S2022_003 | Judgment of 3 January 2023

WHAT YOU NEED TO KNOW

Novartis requested a PI in view of Swissfillon‘s involvement in the preparation of pre-filled syringes of a biosimilar of Lucentis, i.e., Ximluci (fka Xlucane) of Stada / Xbrane.

The PI request was dismissed. Swissfillon’s conduct was covered by the marketing authorization privilege.

A written witness statement does not have testimonial quality under Swiss law. But it may be considered as a physical record, with free evaluation of the evidence on file. 

The case relates to a biosimilar of Lucentis® (INN: ranibizumab); see compendium.ch and spezialitätenliste.ch for further infomation.

Novartis logo

Lucentis® is the ophthalmology blockbuster of Novartis with net sales of USD 2.16 bn in 2021. It is a monoclonal anti-angiogenic antibody that targets VEGF-A; it had initially been developed by Genentech. They still market Lucentis® in the United States only, and Novartis markets it elsewhere in the world under the same name. Lucentis® is available in vials and pre-filled syringes (PFS); the present case relates to the latter.

Illustration of Novartis’ PFS

You might think that it doesn’t take much magic for ranibizumab being privided in a PFS. But far from it! Actually, Novartis asserted two patents (both are currently being challenged in EPO opposition proceedings), i.e.,

Swissfillon logo

However, the judgment is not about how the attacked embodiment reads on the claims, and why the patents are valid or not. Defendant Swissfillon neither disputed validity of the patents nor that the PFS would infringe the patents. The emphasis is on would here: Defendant argued that it has so far only taken actions that are covered by the marketing authorization privilege according to Art. 9 par. 1 lit. c PatA.

Accordingly, Novartis had to credibly demonstrate that Defendant had already taken actions according to Art. 8 PatA that go beyond the marketing authorization privilege (risk of re-occurence; ‘Wiederholungsgefahr’); or that the risk of first actions beyond the marketing authorization is imminent (risk of first occurence; ‘Erstbegehungsgefahr’).

I will come back to that in a minute.

Xbrane logo

Let me first complete the picture from a market perspective. At the face of it, the litigants are Novartis and Swissfillon. However, the attacked embodiment stems from a ménage à trois (at least): Xbrane and Stada had entered into a co-development agreement for Xlucane, a Lucentis® (ranibizumab) biosimilar; see the press release of 12 July 2018 here. Don’t be confused by the product name(s): Xlucane has been referred to as Ximluci in more recent times; see e.g. the press release of 16 September 2022 here. It’s just a change of names.

Swissfillon (only) comes into play with respect to filling and packaging of Xlucane / Ximluci; see e.g. this marketing brochure commissioned by Xbrane (10 June 2019):

As mentioned above, the case pertains to PFS only; this is what the patents in suit are all about. Swissfillon is known to join forces with Terumo as a supplier of syringes in particular for ophthalmic drugs; see e.g. here. Terumo’s Plajex™ is a silicone oil-free, ready-to-fill syringe system with i-coating™ stopper; see e.g. here and the judgment in ¶24.

Plajex™ syringe

But did Swissfillon already take actions beyond the marketing authorization privilege with respect to PFS of Xlucane / Ximluci? The judgment holds that this is not the case. Undisputedly, process validation (to the extent necessary for the marketing authorization) was covered by the marketing authorization privilege. Accordingly, the judgment holds that in the absence of any past infringing actions there is no risk of re-occurence (‘Wiederholungsgefahr’).

Assessment of the risk of first occurence (‘Erstbegehungsgefahr’) was a bit more tricky, though. Is an internal fto opinion prepared by Xbrane sufficient for Swissfillon to begin commercial activities, as argued by Plaintiff? Or will Swissfillon only start commercialisation when an independent freedom-to-operate opinion or a judicial clarification of the IP situation is available?

Interestingly, the judgment holds that reliance on an internal fto opinion by Xbrane would indeed not be suitable for averting the risk of an imminent infringement, since Xbrane has an all too obvious interest in downplaying the risk of patent infringement. However, Novartis could not establish that Swissfillon would indeed rely exclusively on Xbrane’s internal fto opinion. In an overall view of the internal and external correspondence submitted by the Swissfillon (a ‘Gesamtschau’, you know), it was credible for the FPC that Swissfillon considers it important to not infringe any IP rights of third parties and does not venture a launch at risk; ¶26. Separately, Stada has apparently lodged a nullity action against both patents in suit in September 2022. (The exact date is unclear; ¶¶19-20 mention the 20th and the 22nd of September as date of the SoC.)

Further, Novartis argued that Stada may likely obtain the markting authorization as early as in Q1 of 2023, apparently implying that infringement is thus imminent. However, the judgment holds that a marketing authorization is not sufficient to establish a threat of first infringement:

Finally, Swissfillon’s refusal to sign a cease and desist declaration had not any weight either (see ¶26):

Since neither the risk of repetition nor the risk of first infringement has been plausibly demonstrated, it cannot be concluded from the refusal to issue a cease and desist declaration that acts of infringement are imminent.

In sum, the judgment holds that Novartis failed to establish a risk of first infringement (‘Erstbegehungsgefahr’). Accordingly, Novartis’ PI request was dismissed.

The judgment contains some interesting considerations about written witness testimony. Swiss law does not provide for written witness statements; a written statement of a potential witness therefore does not have testimonial quality under the CPC. However, a written statement, even if prepared for court proceedings, contains a person’s record of his or her knowledge and is covered by the concept of a physical record (‘Dokument’) within the meaning of Art. 177 CPC. As a physical record, such a written witness statement is subject to the free assessment of evidence and cannot be simply disregarded. It can provide evidence for factual assertions in conjunction with other evidence or undisputed facts. Further, in particular in summary proceedings, it may well be suitable to make a factual assertion plausible.

On the procedural side, it is interesting to see how the FPC dealt with the various witnesses / party representatives offered by Swissfillon. For one party representative, the judgment holds that he does not need to be heard because he was offered for what turned out to be non-decisive issues anyway (Mr Mahler; Swissfillon); ¶17). For another witness (Mr Amark; Xbrane), the judgment holds that the witness offer was belated; ¶18. Accordingly, both Mr Mahler and Mr Amark have not been heard. However, yet another witness, Mr Koppen (Stada) had been heard during the main hearing of 15 November 2022. But the judgment holds that the witness had been offered only belatedly, and the witness testimony was accordingly disregarded:

Thus, the witness fee is paid by the FPC:

From the main hearing of 15 November 2022, I conclude that a request for marketing authorization of a ranibizumab PFS had already been filed by Stada with the EMA. However, this request had been withdrawn in April 2022, i.e. only shortly before Novartis filed the PI request. Presumably, Novartis had not been aware of the withdrawal. When Mr Koppen was asked for the reasons for the withdrawal, he referred to this as trade secret and refused to answer.

Ximluci in a vial has meanwhile been approved by EMA; see the joint press release of Stada and Xbrane here. I am not aware of a newly filed request with respect to a PFS, though.

✍ MW

BIBLIOGRAPHY

Case No. S2022_003 | Judgment of 3 January 2023

Novartis AG
./.
Swissfillon AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Philippe DUCOR

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

MAIN HEARING

JUDGMENT

PATENTS IN SUIT

EP 3 777 834 B1:

EP 3 685 826 B1:

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Pelliheat repatriated its patent application

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Case no. S2022_001 | Order of 10 August 2022 | ‘Pelliheat; assignment’

Pelliheat logo

I have reported about this case last year on this Blog here. In brief, Pelliheat aimed to undo an improper assignment to a (meanwhile former) director of Pelliheat that the EPO had registered. A register ban had been issued ex-parte, and it was maintained after the defendant was heard. I have learned from the EPO docket that the parties have settled meanwhile. The FPC has issued an order to that effect on 10 August 2022, and dismissed the proceedings.

Now, who ‘won’ this case? Neither Pelliheat nor the former director, I’d say. They both had quite some costs, for … what, actually? An EPO Register that will soon look the same as it did before the improper assignment had been registered.

EPO logo

Oh, wait! The EPO charges a fee for registration of an assignment. Ironically, it pocketed the fee twice in this case. First, for registering the assignment and then again for the re-assignment. That’s peanuts, maybe. But, hey, many pennies make a dollar; and the bank always wins. I still find it somewhat disturbing that the EPO registered the first assignment at all, without any further ado. It should have rang alarm bells that the same person signs for both the assignor and the assignee. Frankly, it is anything but an exception that I am enquired by the EPO for less prominent peculiarities in assignment declarations.

Anyway, the EPO has informed the parties that on 1 Feb 2023  the stay will be lifted and the proceedings be continued with Pelliheat AG as the applicant.

✍ MW

BIBLIOGRAPHY

Case no. S2022_001 | Order of 10 August 2022 | ‘Pelliheat; assignment’

Pelliheat AG
./.
Hans SCHÄREN

Single Judge:

    • Dr. Mark SCHWEIZER
  • Court Clerk:
    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ORDER

Proceedings dismissed in view of the settlement (Art. 241 para. 3 CPC):

EX PARTE JUDGMENT

The FPC has published the judgment in anonymized form only; see here. However, the non-anonymized judgment is in the EPO docket here.

INTER PARTES JUDGMENT

PATENT APPLICATION IN SUIT

WO 2020 / 183 432 A1:

Amended claims in EPO proceedings:

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It’s official now: The effect of email newsletter fizzles out quickly

Reading time: 6 minutes
DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the defendant, Mepha Pharma AG.

Case No. S2022_006 | Order of 12 October 2022 | ‘Fingolimod / Unfair competition’

WHAT YOU NEED TO KNOW

The FPC applies a broad understanding of its concurrent competency with cantonal courts. It suffices that patent law is touched as a preliminary question (‘vorfrageweise’).

Legal interest for a complaint based on the UCA requires a showing that one is actually better off when the complaint is allowed.

Novartis’ request for interim measures against Mepha’s mailing re fingolimod was not considered, for lack of legal interest. Main proceedings based on the UCA are stayed until an indication of validity of EP 894 is available; S2020_002.

Background

As mentioned earlier on this Blog here, Novartis is seeking injunctive relief for Mepha’s generic version of Gilenya®, i.e. Fingolimod Mepha®.

Fingolimod (aka FTY720) is an immunosuppressant for the treatment of relapsing multiple sclerosis (MS). It’s a structural analogue of sphingosine; grab/ rotate the molecule here or below to get a better idea:

Gilenya was Novartis’ third-best selling drug in 2021. It is still a blockbuster, but sales have been declining since 2018 when it was Novartis’ best selling drug (2021: USD 2.8m, -7%; 2020: USD 3.0m, -7%; 2019: USD 3.2m, -4%; 2018: USD 3.3, +5%).

The patent at stake

The patent at stake is EP 2 959 894 B1 (see EPO Register and Swissreg for bibliographic details), with a priority date of as early as 27 June 2006. It’s a grandchild patent: The grandparent application is EP 2 037 906 (regional phase of WO 2008/000419 A1 at the EPO, actively withdrawn in April 2015 after a negative office action), and the parent application is EP 2 698 154 (filed Sept 2013, notification of deemed withdrawal in May 2016 for failure to reply to an office action). Yet another divisional application is pending; EP 3 797 765 (filed Nov 2020).

EP 894 had initially been refused by the ED in November 2020. Novartis appealed in December 2020 and requested expedited processing since it intended to lodge infringement proceedings in Turkey; see the Notice of Appeal, p. 1 and 32 et seqq. The Board of Appeal indeed accelerated the case, overruled the ED and ordered in oral proceedings of 8 February 2022 that a patent be granted; T 0108/21. See also Novartis’ press release of 15 February 2022. Novartis subsequently filed an amended description, with some reservations (cf. p. 2), and withdrew the designation of the U.K. shortly before grant. EP 894 was issued on 12 October 2022, i.e. about 15.5y after the filing date and on the day of issuance of the FPC’s order.

Five oppositions have been filed with the EPO on the day of grant(!).

What happened?
Fingolimod-Mepha

It’s all about Mepha’s letter entitled «Wichtige Mitteilung zur Patentanmeldung von Novartis betreffend Fingolimod-Mepha® 0.5mg» dated 27 April 2022 that had been sent to customers; it had also been available on Mepha’s website until 15 June 2022.

Novartis asserted that the letter contained confusing / misleading information about the exemptions under Art. 9 para. 1 lit. g PatA. Novartis argued that Mepha encouraged physicists and pharmacists to stock-pile Fingolimod-Mepha® for use after the grant of EP 894 and/or when interim injunctive relief in parallel infringement proceedings has been granted. Mepha disagreed that the information was misleading.

Competency of the FPC

Novartis sought to obtain a list of all addressees of the letter, and requested that Mepha be obliged to send a follow-up letter correcting the allegedly confusing / misleading information. The patent had not yet been granted when Novartis brought the suit. Accordingly, Novartis invoked Art. 2 UCA only.

Now, is the FPC competent to hear such a case?

The FPC applied a broad understanding of its concurrent jurisdiction with cantonal courts under Art. 26(2) PatCA, i.e. that it is competent even if patent law is touched only as a preliminary question (‘vorfrageweise’), as it is the case here:

This concurrent competency also covers summary proceedings.

Lack of legal interest

Novartis had argued that the sales numbers of Gilenya and the generic Fingolimod-Mepha establish that Mepha’s letter of April 27 has actually raised Fingolimod-Mepha’s market share from about 17% to about 20-23%:

Monthly sales

Novartis further argued that physicists and pharmacists would docket the letter and consult it again when placing new orders of fingolimod. The President did not buy into this and notes that systematic docketing and re-assessment of such mailings contravenes experience of life. The increased market share of the generic can rather be attributed to the fact that physicists and pharmacists have been made aware or reminded of the mere existence of the generic. This effect, however, is to be accepted by Novartis, at least for the time being while infringement proceedings with the nullity plea in defense are pending.

The President held that Novartis lacks a legal interest because it would not actually be better off when it succeeded with the complaint. On the contrary, the requested follow-up correction letter would likely even worsen Novartis’ position because it would again remind customers of the existence of the generic; p. 9, first para.

What’s next?

Main proceedings in this matter are still pending; O2022_008. The President decided that these proceedings are stayed until a decision in co-pending summary proceedings re infringment / validity of EP 894 is available; S2022_002. If the patent is held presumably invalid, this would also impact the assessment of Mepha’s letter under the UCA:

Gilenya capsule

Oral proceedings in the case S2020_002 are scheduled for 9 November 2022. Stay tuned.

Btw, for the trademark aficionados: Novartis’ two stripes trademark application for the Gilenya capsule has been refused in 2016, for lack of distinctiveness.

✍ MW

BIBLIOGRAPHY

Case No. S2022_006 | Order of 12 October 2022 | ‘Fingolimod / Unfair competition’

Novartis AG
./.
Mepha Pharma AG

Single judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ORDER

PATENT IN SUIT

T 0108/21 — 3.3.01

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Can the duration of settlement talks be credited against the 14 months requirement for acting diligently?

Reading time: 3 minutes

Case No. S2022_004 | Judgment of 24 August 2022 | ‘Software; urgency’

Entitlement disputes are always interesting to follow. This one is not an exception to the rule. The plaintiff (A) is named as one of two inventors in a patent family, and (s)he sued the applicant (B Sàrl) and his/her fellow co-inventor (C); the latter is the sole owner of B Sàrl.

Plaintiff A requested a register ban and, interestingly, a prohibition to sell shares in B Sàrl, etc. (request no. 5). It appears that no main proceedings have yet been lodged.

Unlike many other entitlement proceedings, this one is not about the typical three step questionnaire about the merits of the invention (see e.g. the judgment in O2019_001, r. 26). It was a non-starter for failure to meet the 14 months rule-of-thumb for diligently requesting interim measures (r. 9) — which is why the President decided the matter sitting as single judge.

Cutting a long(er) story short, the judgment holds that plaintiff did not establish that the parties were even engaged in settlement talks:

By way of an anticipated assessment of plaintiff’s witness testimony that had been offered, the judgment holds that it was not necessary to actually hear A as a witness because no further insight was to be expected.

Calculated from the positive knowledge of the issue to the filing of the request for interim measures, 30 months had already lapsed; i.e. much too long. But even if one would assume that settlement talks were ongoing until late autumn 2020 (as asserted), 18 months had lapsed — which was still too long:

The judgment holds that difficulties in finding fundings for litigation is no excuse (apparently, Foris financed this litigation):

Interestingly, the judgment explicitly leaves undecided whether the duration of ongoing settlement talks can be credited against the 14 months at all:

Accordingly, A‘s request for interim injunctive relief was dismissed.

The parties, you ask?

No deciphering of the judgment this time. I have been tempted (if you know me, you will appreciate that I really was!), but I understand that the judgment has been anonymized on request of a party. Since natural persons are involved as parties, I will leave it at this.

/MW

BIBLIOGRAPHY

Case No. S2022_004 | Judgment of 24 August 2022 | ‘Software; urgency’

A
./.
(1)
(2)
B Sàrl
C

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Hans WEISSBERG (RSP)
    • Dr. Rudolf A. RENTSCH (iPrime), assisting in patent matters

Representative(s) of Defendant:

JUDGMENT IN FULL

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Getting off to a lightning start in PI proceedings

Reading time: 3 minutes

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

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

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

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

But what about PI proceedings?

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

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

The order holds that the claims are fixed by way of the order of the BoA; cf. Guidelines E-XII, 9.2 and T 113/92, hn.

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

Accordingly, PI proceedings are continued.

/MW

UPDATE 18 JUNE 2022: The order has been published in non-anonymized form yesterday. I have included the Board of Appeal decision T 0109/21 below and updated the bibliography accordingly. /MW

BIBLIOGRAPHY

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

Novartis AG
./.
Mepha Pharma AG

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

PROCEDURAL ORDER

T 0108/21 – 3.3.01


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Bayer’s compound claim on sorafenib tosylate held presumably valid; PI issued

Reading time: 5 minutes

Case No. S2021_006 | Judgment of 26 April 2022 | ‘Sorafenib tosylate’

Please see the report about the main hearing for some background information about the case.

Zentiva logo

In brief, Bayer HealthCare was seeking preliminary injunctive relief against Sorafenib Zentiva of Helvepharm, the Swiss branch of Zentiva.

sorafenib (free base)
Bayer logo

The present litigation is about alleged infringement (and validity) of claim 12 of EP 2 305 255 B1 (see EPO Register), specifically claiming the tosylate salt of sorafenib as such; i.e. a classic compound claim.

Lately, EP 255 was held to be invalid both in Germany (Federal Patent Court, judgment of 29 September 2021 in cases 3 Ni 12/20 and 3 Ni 13/21) and the U.K. (judgment of 8 October 2021 in case [2021] EWHC 2690 (Pat); the Court of Appeal decided on 1 April 2022 to hear the appeal). Further (negative) judgments that I could get hold of have been issued in The Netherlands (ECLI:NL:RBDHA:2021:13616), and Spain (ECLI:ES:JMB:2021:2692A). A full summary of corresponding decisions is given in the judgment:

The judge-rapporteur’s expert opinion in the present case had provisionally held that the patent was invalid, similar as the outcome e.g. in UK and Germany. However, the final judgment is the exact opposit: It holds that claim 12 is likely valid, and a PI was issued accordingly.

The whole case hinges on the assessment of obviousness. The judgment discusses both WO 00/42012 A1 and Lyons et al. as potentially closest prior art. In both cases, the judgment holds that the skilled person would well have include the tosylate salt into a salt screening:

Further, the judgment holds that the skilled person would not have given up in view of the low solubility of the tosylate, but would rather also have aimed to test the dissolution rate:

However, the FPC was not convinced that the skilled person could have tested the dissolution rate of sorafenib tosylate with standard methods available at the priority date:

Accorginly, the skilled person would not have realized that sorafenib tosylate had a surprisingly high dissolution rate, despite its low solubility (about as bad as the free base):

Dissolution rates of sorafenib salts and free base

Interestingly, EP 255 itself is totally silent about the advantages of the tosylate salt over other pharaceutical forms of sorafenib. However, EP 255 does disclose animal experiment that indicate an anti-cancer effect — which implies sufficient biovailablity.  Accordingly, the judgment holds that experimental data that have only been generated after the filing date in support of the bioavalability are admissible.

Note that the judgment does not discuss ‘plausiblity’ here. Great!

The FPC acknowledges that its finding of presumable validity of claim 12 of EP 255 differs from the decisions in DE, GR, UK, NL and Spain. Briefly investigation the reasons, the judgment holds that it does not appear to have been disputed elsewhere whether the dissolution rate could have been measured with routine methods at the priority date. However, there is yet another difference over the judgments in the UK and NL: These two judgments hold that the skilled person would have synthesized sorafenib tosylate without any inventive activity (for it to be included in the salt screening), and that claim 12 was invalid for this reason — irrespective of whether or not the skilled person would have realized that sorafenib tosylate is suitable and efficient for oral administration. The FPC disagrees with this assessment (¶59):

Bei auf eine chemische Verbindung als solche gerichteten Patenten genügt es aber zur Begründung der erfinderischen Tätigkeit, wenn der beanspruchte Stoff eine überraschende Wirkung oder Eigenschaft aufweist.

The judgment refers to some (very) old decisions of the German Federal Supreme Court (X ZB 11/68 – Disiloxan; X ZB 2/71 – Imidazoline) and some decisions of the Boards of Appeal of the EPO in a footnote in support of this view. Sounds familiar, doesn’t it? But the judgment also refers to Ralf Uhrich’s PhD thesis ‘Stoffschutz’ (available in full text here) criticizing it. The latter is a phantastic read, indeed. Now, that could have been a very interesting aspect of the decision; but the discussion stops right there.

/MW

BIBLIOGRAPHY

Case No. S2021_006 | Judgment of 26 April 2022 | ‘Sorafenib tosylate’

Bayer HealthCare LLC
./.
Helvepharm AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Andreas SCHÖLLHORN

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

JUDGMENT

PATENT IN SUIT

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Undoing an improper assignment, the hard way

Reading time: 5 minutes

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

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

Pelliheat stove

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

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

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

Pelliheat logo

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

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

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

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

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

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

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

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

UPDATE 13 July 2022: The register ban has been maintained after hearing the Defendant in summary proceedings; see here.

/ MW

BIBLIOGRAPHY

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

Pelliheat AG
./.
Hans SCHÄREN

Single Judge:

    • Dr. Mark SCHWEIZER
  • Court Clerk:
    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • n/a

EX PARTE JUDGMENT

The FPC has published the judgment in anonymized form only; see here. However, the non-anonymized judgment is in the EPO docket here.

INTER PARTES JUDGMENT

PATENT APPLICATION IN SUIT

WO 2020 / 183 432 A1:

Amended claims in EPO proceedings:

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Enforcement of an injunction: The risk of hyperlinks

Reading time: 6 minutes

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

C&E Fein and Bosch have been litigating with Coram for quite a while, first in summary proceedings (no PI was imposed on Coram; see this Blog here) and subsequently in main proceedings (see this Blog here). The judgment in main proceedings held that EP 362 (see the EPO Register and Swissreg for further information; verbally substantially limited inter partes) was valid and infringed by Coram’s tools with connectors referred to as ‘Quick-Fit’ or ‘Q-Fit’.

Coram appealed, but the Supreme Court dismissed the appeal with judgment of 11 February 2022 (published only yesterday, 6 April 2022). Note that the appeal had no suspensive effect.

While the appeal was still pending, the parties locked jaws again. C&E and Bosch asserted that Coram did not comply with the court order.

Here is what happened:

The FPC handed down its judgment in main proceedings on 1 September 2021. The operative part of the judgment inter alia prohibits Coram to contribute to the offering of the saw blades with infringing ‘Quick-Fit’ connectors:

I take from the judgment that Coram immediately complied with the operative part of the judgment in most parts. Coram does not sell directly to end users, but only to a single distributor, Revotool. Coram immediately stopped its sales to Revotool, recalled infringing items from Revotool and urged Revotool to recall items from downstream distributors.

However, Coram’s website apparently remained unchanged until about 19 October 2022; the landing page still showcased tools with Q-Fit connectors e.g. on 16 September 2021. The tricky thing is that there is a hyperlink («Wo kaufen? […] Händlernetzwerk») at the bottom of the page, that provides a list of all points of sales in Switzerland where Coram products (not all of which are covered by the judgment) can be purchased by end users. The judgment holds that this is covered by the prohibition of contributing to offers. The legal term «Mitwirken» is broad, but clear:

Even though no actual sale of infringing goods has occured, the judgment holds that Coram had an increased duty of care in view of the judgment, and that a hyperlink to webpages where infringing goods are still offered (even though they have apparently not been sold anymore via these webpages!) is not excusable under the circumstances.

After a warning letter, Coram put a disclaimer on its website on or after 19 October 2021 (see e.g. here, 30 November 2021):

Das Angebot der Quick-Blätter gilt nicht für die Schweiz. Es werden keine Sägeblätter mit der Quickaufnahme in die Schweiz verkauft.

The judgment holds that this did not resolve the issue, but rather amounts to a somewhat contradictory behavior. The disclaimer indicated non-availability in Switzerland, but some points of sale that were hyperlinked by Coram still offered infringing tools.

Calculation of the administrative fine
you’ve been bad!

The initial threat was an administrative fine of CHF 1’000,– per day. The judgment acknowledges that Coram did not entirely ignore the operative part of the judgment and holds that the violation was only minor («minderschwer»). Further, Coram did not act wilfully, but only negligently. With the disclaimer in place after 19 October 2021, the violation is held to be even less severe. Accordingly, the daily fine was set to CHF 300,– for each day of violation until 19 October 2021, and CHF 100,– for each day thereafter.

Even though the max. fine was reduced by 70% and 90%, respectively, the overall fine still amounts to CHF 16’800,–. The overall bill for Coram is CHF 25’800,–, including a court fee of CHF 4’000,– and a partial refund of plaintiffs’ expenses for legal representation of CHF 5’000,–. That’s quite some money for a negligent hyperlink to some point of sales websites that still showed infringing offers which did not result in a single sale.

Coram’s second generation ‘Quick-Fit’

Here is an example of Coram’s tools with the first generation ‘Quick-Fit’ or ‘Q-Fit’ connectors :

You will readily appreciate the hexagon shape of the connector. Accordingly, there are six driving area regions in the first generation ‘Q-Fit’ connectors — an even number between 4 and 32 in accordance with the verbally limited claim.

Apparently, this fits well into the dodecagon shape of Starlock® fittings of Bosch and C&E Fein:

Starlock® fitting and tool  with dodecagon shape
‘Q-Fit’ (gen. 2)

Interestingly, a heptagon shape apparently is also compatible with the Starlock fitting. Coram’s second generation ‘Q-Fit’ (see e.g. the header image) that has been introduced into the market apparently in due consideration of the injunction has no even number of driving area regions anymore.

A smart move, this quick fix second gen “Q-Fit”, isn’t it?

/MW

BIBLIOGRAPHY

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Daniel M. ALDER
    • Dr. Markus A. MÜLLER

Judge-rapporteur:

    • Dr. Daniel M. ALDER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUMMARY JUDGMENT / ENFORCEMENT

JUDGMENT ON THE MERITS

PATENT IN SUIT

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