Case-law of the Swiss Federal Patent Court
Case No. S2016_007 ¦ Decision of 10 August 2016 ¦ “Abweisung superprovisorische Massnahme; Interessenabwägung; Pflicht der klagenden Partei, den relevanten Sachverhalt vollständig darzulegen” Continue reading “Generic version of Faslodex®, with a procedural twist”
Case No. S2016_006 ¦ Decision of 14 July 2016 ¦ “Geräuscharmer Turbolader: Abweisung Massnahmebegehren; ungenügende Substantiierung einer Patentverletzung; Erschöpfung gemäss Art. 9a Abs. 4 PatG eingetreten”
Price differentiation for various markets is a common phenomenon, for a broad range of products. Continue reading “The first decision of the FPC on international patent exhaustion”
Case No. S2016_005:
Decision of 27 June 2016 ¦ “Anordnung Beschreibung (superprovisorisch)”
Decision of 13 July 2016 ¦ “Erledigung Beschreibung”
First things first: Who are the parties?
From the wording of the requests and the feature analysis, it is clear that the patent in suit is EP 0 911 437 B1 of Lässer AG Stickmaschinen (formerly: Franz Lässer AG); see the EPO Register and Swissreg for any further details. Moreover, it is noted in the decision that the patent had been opposed by a connected undertaking of the defendant, but the opposition was dismissed and EP’437 was maintained as granted. The former opponent was Saurer Sticksysteme AG. Thus, it is reasonable to assume that the defendant is Saurer AG (again, see the summary of O2014_009 on this Blog here).
The feature analysis of claim 1 of EP’437 reads as follows:
M1: Embroidery machine, in particular a Schiffli embroidery machine, in which a mobile thread guide (17, 17′, 17″) serves as one of the stitch-forming members
M2: with a row of embroidery locations (S1, S2, S3 …) which can be brought individually into and out of operation
M3: which each comprise an individual thread guide (17, 17′, 17″), which can be brought into and out of operation
M4: with at least one drive member (11, 11′, 11″, 11″‘), with mobile bars (33, 42) for actuating embroidery members (15, 43)
M5: and with coupling members (51, 53) at these embroidery members (15, 43), which may be engaged with or disengaged from the corresponding bar (33, 42)
M6: with a switching member (71, 71′, 71″) for simultaneously bringing a plurality of embroidery members (15, 43, 89, 91) of an embroidery location (S1, S2, S3) into and out of operation
characterised in that
M7: a thread guide bar (37) is provided
M8: that the thread guide (17, 17′, 17″) comprises a thread guide lever (63, 63′, 63″) and a coupling member (69, 121, 131)
M9: that the switching member (71, 71′, 71″) comprises at least one switching rod (75, 75′, 75″) and a member (73) connected to the latter for actuating the switching rod, e.g. a cylinder (73) or motor
M10: and that at least the needle (15) and the thread guide (17, 17′, 17″) can be simultaneously switched with the member (73) for actuating the switching rod and the switching rod (75, 75′, 75″).
The invention can be more easily understood with the figures 1, 4 and 5 at hand:
The plaintiff requested preliminary measures to secure evidence; Art. 77(1) lit a PatA.
The parties had exchanged their views on whether or not a newly to be introduced machine of the defendant infringed EP’437. The machine had also been presented at a trade fair in November 2015 (most likely ITMA 2015 in Milan, November 12-19, 2015; see below). The defendant explicitly rebutted fulfilment of feature M10 — without, however, explicit acknowledgement of fulfilment of the other features M1-M9. Anyway, the FPC held that the defendant had credibly established at least fulfilment of features M1-M6 by prima facie evidence. The request for preliminary measures to secure evidence concerned the remaining features M7-M10. As to these features, the FPC held that fulfilment of feature M6-M9 also seems to be given, and that potential fulfilment of feature M10 is plausible.
In addition, the FPC held that there were further indications of an infringement: The defendant had openly presented the new machine at the trade fair, and the defendant reacted on the plaintiff’s initial inquiry with respect to the suspected infringement. Only when the plaintiff posed more critical questions, the defendant stopped any discussion and the later presentation of the machine was only ‘on invitation’ at the premises of the defendant, at the occasion of an open house day. And this is why there was special urgency: The open house day had been announced for July 1, 2016; the request for preliminary measures was received at the FPC on June 23. Moreover, the plaintiff noted that the enforcement of the measure would likely be frustrated if the defendant would be heard beforehand. The plaintiff had thus requested that the FPC orders the interim measure immediately and without hearing the opposing party. The FPC did so, and the description was executed at the premises of the defendant on June 28. The defendant later on requested that some details were blackened-out from the minutes of the description before it was made available to the plaintiff. Since these details were of no relevance for the claim features at stake, this request was allowed.
It remains to be seen what the plaintiff has learned from the description. Will the findings be the basis for yet another infringement case Lässer ./. Saurer?
—
WHAT’S HAPPENING ON THE MARKET
There are strong indications that Saurer’s ‘Epoca 7’ is concerned. Saurer’s press release in advance of ITMA 2015 in Milan (November 12-19, 2015) announced the introduction of the new ‘Epoca 7’ with
new technologies […] such as the individual thread guide activation, the newly developed thread delivery and […].
That pretty much resembles the suspicious wording in the invitation to the open house day on July 1, 2016, i.e. ‘individuelle, automatische Fadenleiterschaltung’. I could not find much more information on the actual configuration of this machine, but you might get a first impression from the handouts of Saurer’s press conference at ITMA 2015 (p 26):
The presentation of ‘Epoca 7’ at ITMA 2015 is also available here:
Reported by Martin WILMING
—
BIBLIOGRAPHY
Case No. S2016_005:
Decision of 27 June 2016 ¦ “Anordnung Beschreibung (superprovisorisch)”
Decision of 13 July 2016 ¦ “Erledigung Beschreibung”
Lässer AG Stickmaschinen ./. Saurer AG
Subject(s):
Composition of the Board of the FPC:
Reporting judge:
Court Secretary:
Representative(s) of claimant:
Representative(s) of defendant:
—
FULLTEXT OF THE DECISIONS
Decision of 27 June 2016:
Decision of 13 July 2016:
—
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Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”
This case is an assignment action of Marcel Riendeau against Zehnder Group International AG. The IP rights concerned are two European patent applications and the co-pending PCT applications, i.e.:
Back in 2009, the parties apparently entered into a cooperation based on a novel heat exchanger technology that had been invented by the plaintiff. A first patent application was filed in the name of Zehnder Verkaufs- und Verwaltungs AG — subject to final contracts to be concluded. This never happened. In the meantime, this application proceeded to grant as EP 2 618 090 B1; see the European Patent Register for any details. Interestingly, it has been assigned by Zehnder Group International AG to Westwind Ltd, the one-man business of Mr Riendeau. However, this assignment is already a story in itself: Apparently, Zehnder Verkaufs- und Verwaltungs AG first assigned the application to Marcel Riendeau with an agreement dated 5 May 2014. But later, it turned out that Zehnder Verkaufs- und Verwaltungs AG did not exist anymore at that date. Its legal successor was Zehnder Group International AG, the defendant on file.
At the technical side, the invention(s) pertain to heat exchanger elements schematically illustrated in the following figures. EP’834 and EP’836 explicitly recite polymer films being provided on the perforated plate element, while EP’090 holds that “[a]ccording to the inventions, the polymer is supplied as a dispersion”; see paragraph [0016].
The parties apparently also discussed the so-called extensions of the first patent. The importance to safeguard a filing date well before publication of the first application (EP’090) was apparently discussed, too. But the plaintiff did not trust the defendant to do so. Therefore, on 19 July 2013 he filed US 2013/269906 A1 on his own. Note that the two applications in suit were filed only later, i.e. 22 July 2013.
For the corresponding PCT applications WO’544 and WO’543 two additional inventors have been designated, i.e. defendant’s in-house patent attorney and the head of the R&D department.
This is only a rough overview of what appears to be a perfect mess. Interested in any further details? Plaintiff’s writ is available in its entirety from the EPO online files:
Proceedings at the EPO are currently stayed on request of the plaintiff, in both cases.
In parallel main proceedings (O2015_009; no publication yet), plaintiff essentially requests that both patent families are to be assigned to him; and that the designations of the two additional inventors are to be withdrawn. As an interim measure, plaintiff essentially requested to impose a ban on defendant’s authority to dispose of the applications in suit.
Now, what did the defendant say? Interestingly, the decision holds that plaintiff’s detailed and well documented allegations remained essentially undisputed on the merits. The improper assignment of EP’090 did the rest to establish a certain risk / lack of due care if authority over the applications in suit remained with the defendant. Finally, the interim measures were held proportinate: defendant himself submitted that no transfer, granting of rights or amendments to the applications in suit was envisaged. However, no unconditional and binding declaration was submitted. Consequently, interim measures were granted as requested.
This decision in summary proceedings has already become final.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”
Marcel RIENDEAU ./. Zehnder Group International AG
Subject(s):
Board of Judges:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— DECISION IN FULL —
— BE ON THE KNOW —
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Case No. S2015_002 ¦ Decision of 20 August 2015 ¦ “Abweisung vorsorgliche Massnahmen; Verletzungshandlung nicht glaubhaft gemacht”
This is yet another case relating to the contraceptive drospirenone. See this Blog here, here and here for details on an earlier case (with different parties) and relevant background information.
The plaintiff again sought for preliminary injunctive relief and invoked two European patents: EP 1 149 840 B2, which had already been at stake in the earlier case; and — for the first time — the only recently granted EP 2 168 974 B1 (a divisional of EP’840). Both patents relate to methods for the production of drospirenone (DRSP), a compound used in contraceptives (birth control pills).
Plaintiff (1) is the registered proprietor of the Swiss part of EP’840, i.e. Bayer Pharma AG. Plaintiff (2) is the registered proprietor of the Swiss part of EP’974, i.e. Bayer Intellectual Property GmbH.
The independent claims of EP’840 and EP’974 only differ slightly. The single claim of EP’974 reads as follows:
Process for preparing drospirenone from [well, let’s call it ‘precursor A’] in isolated form by water elimination.
On the other hand, the single claim of EP’840 reads as follows:
Process for preparing drospirenone by water elimination from [precursor A] through addition of p-toluenesulphonic acid to [precursor A].
EP’974 thus requires [precursor A] in isolated form, but is not limited to a certain catalyst for water elimination. To the contrary, EP’840 explicitly recites p-toluenesulphonic acid as the catalyst, but does not require the isolated form of [precursor A].
From the details given in the decision, it is evident that the defendant is Spirig HealthCare AG. The three products concerned are Sue 20, Sue 30 and Suzanne:
Reasoning presented by the plaintiffs as to why these products are infringing both EP’840 and EP’974 was an intricate issue: From a LOT number imprinted on the blisters, it was concluded that the Spanish company Laboratorios Léon Farma S.A. was the manufacturer. In turn, this company allegedly obtained drospirenone inter alia from the Italian company Industriale Chimica s.r.l.; both companies are parties in opposition proceedings re EP’974 at the EPO (see EPO register). Moreover, it has been alleged based on information from parallel proceedings in Germany, Spain and Switzerland that the method for manufacturing the drospirenone used by Industriale Chimica s.r.l. was as follows:
This was a non-starter. The defendant denied that the method outlined above had been used. Rather, defendant argued that a one-step palladium-catalyzed synthesis was used:
The defendant even provided exhaustive evidence in support of this synthesis being used, i.e. purchase orders, declarations of personnel of both Laboratorios Léon Farma S.A. and Industriale Chimica s.r.l., as well as an excerpt from the “Drug Master File Drospirenone D., Module 999: Description of manufacturing process and process controls”.
Plaintiffs did not allege that the one-step palladium-catalyzed synthesis would infringe EP’840 and EP’974. Rather, only the actual use of the palladium-catalyzed synthesis was disputed. Plaintiffs argued that defendant’s documentation had not been approved by an independent third party. Moreover, the palladium-catalyzed synthesis would be too expensive and more difficult to handle, for security reasons.
The FPC held that the documentation provided by the defendant in support of the palladium-catalyzed reaction was credible. Plaintiffs’ suspicion of false testimony was held unfounded, as well as the arguments with respect to the feasibility of the palladium-catalyzed process for cost and security reasons.
Consequently, the plaintiffs have failed to furnish prima facie evidence for a patent infringement. To the contrary, defendant’s documentation was held to credibly establish a case of non-infringement, by prima facie evidence. The plaintiffs’ request for interim injunctive relief was thus dismissed.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2015_002 ¦ Decision of 20 August 2015 ¦ “Abweisung vorsorgliche Massnahmen; Verletzungshandlung nicht glaubhaft gemacht”
(1) Bayer Pharma AG
(2) Bayer Intellectual Property GmbH
./.
Spirig HealthCare AG
Subject(s):
Board of Judges:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— DECISION IN FULL —
— BE ON THE KNOW —
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Case No. S2013_009 ¦ Decision of 18 March 2015 ¦ “Unentgeltliche Rechtspflege”
This is not a new case. A first decision had been issued already on 29 January 2014 in the same matter. At that time, a request for recusal of Dr. Dieter BRÄNDLE had been dismissed. Moreover, the request for legal aid had also been dismissed — but only inasmuch as it concerned the request for recusal. The plaintiff’s request for legal aid also covered potential infringement proceedings, and this is what the present decision is all about.
According to Art. 117 CPC, a person is entitled to legal aid if he does not have sufficient financial resources (lit. a); and if his case does not seem devoid of any chances of success (lit. b). The claimant receives state benefits; his indigence was thus acknowledged (Art. 117 lit. a CPC). But the chances of success remained to be evaluated (Art. 117 lit. b CPC). In this respect, it is not necessary that the chances of success are outstanding. A case is not deemed to be devoid of any chances of success even if the risk of loss is slightly higher than the profit prospects. However, the profit prospects must not be be substantially lower than the risk of loss. In simple terms, it is decisive whether a party having the necessary financial resources would reasonably decide to lodge the suit. This has to be assessed by the President acting as single judge (Art. 23(1) lit. c PatCA) in summary proceedings (Art. 119(3) CPC).
Evidently, the chances of success depend on (i) the validity of the patents in suit; and (ii) whether the attacked embodiments actually infringed said patents. This assessment requires technical exerptise, and the President thus consulted a technically trained judge (Art. 35 PatCA).
The patents in suit are discussed in more detail in an ealier post. It’s an eventful history of limitations; the latest (second) published limitations are CH 687 352 C3 and CH/EP 0 660 960 H3. Yet another series of (third) limitations is mentioned in the decision (allegedly filed on 1 October 2013), but cannot yet be tracked in Swissreg. Thus, both patents are to be assessed on the basis of the second limitation only. In general terms, the claimant alleged that these patents were infringed by a method and system carried out / installed in Switzerland for collecting the heavy vehicle charges.
As to the validity of the patents on the basis of the prior art that is readily apparent, the technically trained consulting judge concluded that: —
The President agreed with this opinion.
As to the allgedly infringing embodiments, the technically trained consulting judge held that: —
The President also agreed with this opinion, but the latter (potential) further amendment of CH/EP 0 660 960 H3 was not taken into consideration; the facts are to be considered as they are on the filing date of the request for legal aid (Supreme Court decisions 139 III 475, r 2.2 and 138 III 217, r 2.2.4 with further reference). Nevertheless, in view of at least one claim having been plausibly infringed, the case could not be held devoid of any chances of success.
The decision also expands on the implications of the fact that both patents in suit have already expired back in 2012 and 2013, respectively. Therefore, there is no injunctive relief at stake any more; the potential plaintiff might only invoke financial claims. In general terms, the claimant apparently mentioned Art. 41 ff, Art. 423 and Art. 62 ff CO. However, a claim under Art. 41 ff CO requires fault, and a claim under Art. 423 CO requires bad faith. Only a claim for restitution in view of an unjust enrichment (Art. 62 ff CO) neither requires fault or bad faith; see Mark SCHWEIZER, Zivilrechtliches Verschulden bei der Verletzung von Schutzrechten, sic! 2015, p 1ff. In this respect, it is to be noted that the second series of limitation of the patents in suit was inter alia based on features taken from the description of the patents. Fault or bad faith of the potential defendants is thus doubted in the decision; only the (usually lower) restitution under Art. 62 ff CO would thus remain as a basis of a financial claim.
In passing, the decision also notes that the defendants might refer to the defence of limitation, which is to be taken into consideration in the assessment of whether or not legal aid is to be granted; see Supreme Court decision 119 II 368, r 5a. But from the file as-is, no clear conclusions could be drawn in this respect.
Legal aid was thus granted, for the time being. However, it is noted in the decision that — depending on the reasons given in the suit to be filed — the legal aid might be again withdrawn later on.
Reported by Thorsten MÜLL and Martin WILMING
— BIBLIOGRAPHY —
Case No. S2013_009 ¦ Decision of 18 March 2015 ¦ “Unentgeltliche Rechtspflege”
(not identified)
./.
1. (not identified)
2. (not identified)
Subject(s):
Board of Judges:
Cosulting Judge:
Representative(s) of Plaintiff:
Representative(s) of Defendant 1:
Representative(s) of Defendant 2:
— DECISION IN FULL —
— BE ON THE KNOW —
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Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”
This is further to an earlier post in this matter.
In brief, both the plaintiff Gilead Pharmasset LLC and the defendant AbbVie Inc. had filed patent applications on a combination of sofosbuvir and ledipasvir (marketed by Gilead under the tradename Harvoni), and Gilead had lodged an assignment action against AbbVie in main proceedings (O2014_013). A block of the patent register had been ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.
In the meantime, the defendant was belatedly heard and the FPC now finally decided on the requested interim measures (Art. 265(2) CPC). And: The interim measures were upheld to a large extent, but examination and grant proceedings may now continue. Still, it will be highly interesting to see how the case will be decided on the merits in co-pending main proceedings.
However, also the present decision has some interesting procedural implications:
i) SUBSTANTIATION BY REFERENCE TO WRIT
The plaintiff had filed the assignment action in main proceedings on the very same day as the request for interim measures. In order to avoid unnecessary repetition in the substantiation of the request for interim measures, the respective parts of the writ were incorporated by reference. The defendant argued that this was inadmissible. And indeed, the FPC held that global references to other documents are regularly not sufficient. But in the present matter, it was. The underlying facts in both proceedings are the same and the plaintiff’s allegations are thus evident. Under these circumstances, it would be an excessive formalism to insist on a complete repetition in summary proceedings.
ii) UNCONDITIONAL RIGHT TO REPLY IN SUMMARY PROCEEDINGS
The defendant had filed his reply to the request for interim measures on December 22, 2014. The FPC then informed the parties that an exchange of further written submissions is dispensed with. In addition, the plaintiff was informed that any remarks on the defendant’s reply would have to be submitted in due course, and the FPC further held that remarks filed by no later than January 19, 2015 would be considered timely filed. Apparently, the plaintiff then filed very extensive remarks, along with two folders of exhibits. The defendant refrained from making any further remarks on the merits, but essentially argued that the new allegations were to be ignored by the court.
The FPC held that the plaintiff’s submission of January 2015 is to be considered as a submission made under the condition of the unconditional right to reply. With reference to the decision 4A_815/2014 (r. 3.2) of the Supreme Court, the FPC clarified that this decision has not ruled out submissions under the unconditional right to reply in summary proceedings, but rather only relativised its scope. Anyhow, the plaintiff’s submission was only considered inasmuch as it was occasioned by the defendant’s reply (analogous to BGE 4A_487/2014, r. 1.2.4).
iii) BELATED SUBSTANTIATION OF A NOT EASILY REPARABLE HARM
Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). The plaintiff had argued in the initial request that three potential actions of the defendant could cause an irreparable harm, i.e. (1) an assignment of the patent applications to a third party; (2) the granting of rights (licences or pledge); and (3) changes to the contents of the applications (Art. 51 and 64 PatR).
However, the plaintiff was silent on a not easily reparable harm that could come along with a continuation of the examination and grant procedure as such. The FPC took note that the plaintiff presented arguments in this respect for the first time only in the submission of January 19, 2015. But the FPC held that this was belated and did not consider those arguments any further.
In sum, the FPC thus partially lifted the ban on AbbVie’s patent applications, and the examination and grant proceedings of CH 707 029 and CH 707 030 may now continue. As to the remaining potential actions (1)-(3) outlined above, the defendant basically accepted the request for interim measures: The defendant confirmed to the court that he did not even think of any of these actions. Thus, the FPC upheld the interim measures to that extent.
iv) AMOUNT IN DISPUTE
The court fee depends on the amount in dispute. Contrary to Art. 221(1) lit. c / Art. 219 CPC the plaintiff did not indicate the amount in dispute for the summary proceedings. In main proceedings, the plaintiff estimated the amount in dispute to “exceeding CHF 1m”. The defendant estimated the amount in dispute (for the main proceedings) to “exceeding CHF 10m”. All this did not help much to figure out the actual amount in dispute in summary proceedings. However, the defendant had requested a security of CHF 5m in case the ban with respect to the examination and grant proceedings would have been upheld. The FPC took this as a sufficient indication of the amount in dispute and thus fixed it to CHF 5m (BGE 92 II 62, r. 3). This results in a court fee of CHF 30’000,– (which is moderate in view of the value in dispute; see CostR-PatC), provisionally borne by the plaintiff (still subject to the outcome in main proceedings).
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”
Gilead Pharmasset LLC ./. AbbVie Inc.
Subject(s):
Composition of the Board of the FPC:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— FULL TEXT OF THE DECISION —
Case No. S2014_001 ¦ Decision of 11 February 2015 ¦ “Vorsorgliche Massnahmen; Bedeutung ausländischer Nichtigkeitsurteile für die Glaubhaftmachung der Nichtigkeit des Streitpatents”
— THE DECISION IN A NUTSHELL —
AstraZeneca’s patent on an extended release formulation of quetiapine (Seroquel®) is heavily litigated in many countries. The FPC now dismissed AZ’s request for interim injunctive relief, essentially on the basis of parallel decisions in various European jurisdictions that held the patent invalid for lack of an inventive step.
— THE DECISION IN MORE DETAIL —
This case is all about 2-{2-[4-(Dibenzo[b,f][1,4]thiazepin-11-yl)-1-piperazinyl]ethoxy}e
Getting confused? No worries.
This molecule is better known as quetiapine (international non-proprietary name, INN) or under the tradename Seroquel® of AstraZeneca. It is an atypical antipsychotic approved for the treatment of schizophrenia, bipolar disorder, and along with an antidepressant to treat major depressive disorder.
Seroquel is still a blockbuster drug, even though revenues have drastically declined since 2011 (see below). It was first approved by the FDA in 1997, and today generics are already available.
The plaintiff / patentee had requested interim injunctive relief about one year ago, based on EP 0 907 364 B1; the underlying PCT application is WO 97/45124 A1. The patent on quetiapine as such (EP 0 240 228 B1) has already lapsed. Note that EP 0 907 364 B1 only protects an extended release formulation thereof. Independent claim 1 at stake reads as follows:
A sustained release formulation comprising a gelling agent and [quetiapine] or a pharmaceutically acceptable salt thereof, together with one or more pharmaceutically acceptable excipients.
It was undisputed that the formulations marketed by the defendant contained — besides quetiapine — lactose and Viscarin GP 209. However, while the plaintiff / patentee argued that Viscarin GP 209 was a gelling agent, this was disputed by the defendant. Further, the defendant alleged that the patent-in-suit was invalid for various reasons: Insufficient disclosure of the invention; lack of novelty or, at least, lack of an inventive step.
In summary proceedings, the standard of proof is only prima facie evidence; see Art. 261(1) CPC, Art. 77 PatA. This also applies to a defendant’s plea in defense (see e.g. BGE 132 III 83, r. 3.2; BGE 103 II 287, r. 2; BGE 4P.228/1996). The national parts of EP 0 907 364 B1 had been revoked for lack of an inventive step in already five jurisdictions: Germany, the United Kingdom, the Netherlands, Spain and Italy. Only a decision of the Commercial Court of Vienna (Austria) held that the claimed subject matter involved an inventive step. I have collected copies of some of these decisions as follows: 3Ni 43/10 of the Federal Patent Court of Germany (also an inofficial EN translation is available) and the second instance decision X ZR 41/13 of the Federal Supreme Court of Germany; the decision of the High Court of Justice and the second instance decision of the Court of Appeal in the United Kingdom; the decision of the Appeal Court The Hague (Netherlands).
With reference to the decision 4P.89/2004 (r. 3.1-3.2) of the Supreme Court, the FPC unequivocally held that
[f]or the sole reason that the patent had been declared invalid by five European courts, the defendant’s plea for nullity is credible. […] Accordingly, the request for interim measures would have to be readily dismissed, […]. Nevertheless, in terms of a diligent assessement, an opinion of the reporting judge […] was obtained.
The FPC held that the alleged insufficiency of disclosure of the invention in the patent-in-suit was unfounded,
[…] at least to the extent of the specific embodiments disclosed in the patent-in-suit. However, this does not mean that the invention is workable over the whole scope of the claim, as required by Art. 83 EPC.
However, the FPC did not expand further on the alleged insufficiency of disclosure, but rather exhaustively discussed the parallel European decisions referred to above. The FPC held that the five decisions denying an inventive step were convincing, while the only dissenting decision of the Commercial Court of Vienna was held to be not conclusive.
In brief, the Federal Patent Court of Germany had found that the claimed subject matter did not involve an inventive step, starting from O. Gefvert et al.: “Time course for dopamine and serotonin receptor occupancy in the brain of schizophrenic patients following dosing with 150 mg Seroquel™ tid” (Abstract P-4-65 in European Neuropsychopharmacology 09/1995; 5(3):347) in combination with a press release of Eurand America, Inc. (“Eurand America, Inc. Signs Development Agreement with Zeneca Pharmaceuticals” (October 2, 1995)), in further view of Aulton, M.E.: “Pharmaceutics. The Science of Dosage Form Design” (1988) and US 4,389,393 A. This finding was confirmed by the Federal Supreme Court of Germany. The other courts apparently cited the same or similar prior art in support of their findings of lack of an inventive step; the Appeal Court The Hague further cited Hirsch, S.R.: “A new Atypical Antipsychotic Drug” (British Journal of Psychiatry (A22), May 1996). Only the Commercial Court Vienna apparently held that the “once-a-day” indication in the Eurand press release did not prompt the person of routine skill in the art towards an extended release formulation.
Be that as it may, the FPC held that the defendant had credibly established a lack of inventive step by prima facie evidence on the basis of the parallel European decisions.
The plaintiff had submitted amended / restricted sets of claims of the patent in suit, as auxiliary requests. However, the amendments did not revert the FPC’s findings re inventive step. The amendments related to the amount of the gelling agent to be added to the formulation, but no non-obvious effect of the amounts had been alleged by the plaintiff. The FPC could not spot any such effect, either. Therefore, the request for interim injunctive relief was dismissed.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2014_001 ¦ Decision of 11 February 2015 ¦ “Vorsorgliche Massnahmen; Bedeutung ausländischer Nichtigkeitsurteile für die Glaubhaftmachung der Nichtigkeit des Streitpatents”
AstraZeneca AB ./. (n/a)
Subject(s):
Composition of the Board of the FPC:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— FULL TEXT OF THE DECISION —
Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”
— THE DECISION IN A NUTSHELL —
If an ex parte interim injunction is requested, the FPC will — to a certain extent — anticipate potential counter-arguments of the defendant ex officio, and evaluate their cogency. Novelty and involvement of an inventive step was not offhandedly assumed for a Swiss patent that is unexamined on the merits, since (i) the IPRP of the underlying PCT application denied novelty; and (ii) counter-arguments of the plaintiff / patentee re novelty and inventive step were not found convincing. Consequently, the interim injunction was not granted ex parte.
— THE DECISION IN MORE DETAIL —
As a general rule, Art. 261(1) CPC provides that a court shall order interim measures required provided the applicant shows credibly that: (a.) a right to which he or she is entitled has been violated or a violation is anticipated; and (b.) the violation threatens to cause not easily reparable harm to the applicant.
While interim measures are regularly dealt with in inter partes proceedings, ex parte interim measures may also be granted according to Art. 265 CPC: In cases of special urgency, and in particular where there is a risk that the enforcement of the measure will be frustrated, the court may order the interim measure immediately and without hearing the opposing party. This is frequently referred to as a super-provisional measure.
Thus, the law provides for such super-provisional measures. And the FPC has already granted a few of them. However, in none of these cases super-provisional injunctive relief was granted. And the present case it not (yet) the one that got away. But it provides further guidance on how the FPC actually deals with such requests.
It is common sense that the court has to examine a request for super-provisional measures circumspectly: The court must not offhandedly infer the credibility of the (qualified) endangering, but rather has to request proof, besides a plausible presentation of the facts (see p. 7536, penultimate para. of the dispatch of the Federal Council on the Civil Procedure Code).
However, what does this mean in patent litigation matters?
The FPC now took the opportunity to further shape the actual requirements in a hands-on example. Let’s have a brief look at the technical matter at stake. Even though it is not explicitly mentioned in the decision, it is clear that CH 708 247 B1 and WO 2013/174738 A1 are at stake. For further bibliographic details, please see Swissreg with regard to the Swiss patent and Patentscope with regard to the PCT application, respectively.
The PCT application had been nationalised in Switzerland and proceeded to grant, but without any examination on the merits (Art. 59(4) PatA). Therefore, the FPC must not offhandedly assume validity of the Swiss patent if ex parte interim measures are requested. Rather, further indication in support of the validity of the Swiss patent is necessary, such as e.g. an official search report or an international preliminary report on patentability (IPRP); see e.g. S2013_005, r. 3. Here, an IPRP was indeed available — but novelty was explicitly denied therein. Note that the claims of the Swiss patent and the PCT application are identical. Of course, the plaintiff did not agree with the findings of the IPRP and presented arguments in support of novelty over all documents cited in the IPRP. However, the FPC concluded that the findings of the IPRP re lack of novelty were prima facie not refuted. But even if the FPC would have followed the plaintiff’s reasoning re novelty, the plaintiff apparently failed to present convincing arguments re inventive step. In this regard, the FPC again reiterated that it is essential to define the person of skill in the art whenever inventive merit is being discussed. Moreover, it has to be shown why the person of skill in the art would not have arrived at the claimed solution, e.g. on the basis of the problem-and-solution approach established in EPO proceedings. The FPC briefly assessed the potential involvement of an inventive step and concluded that obviousness over D1 (EP 2 248 485 A1, in particular Fig. 5, 6 and 8) could not be ruled out by prima facie evidence, in further view of D3 (WO 2011/027229 A2).
My personal take-away message from the decision is the following:
To a certain extent, the court thus has to anticipate potential counter-arguments of the defendant ex officio, and to evaluate their cogency.
Evidently, the hurdle for an ex parte interim injunction is high — but not insurmountable. The FPC explicitly notes what has been missing here:
For an ex parte interim injunction to be granted, and if a negative IPRP has been issued, the FPC needs to be in a position to conclude prima facie and at least on the basis of the plaintiff’s submission that novelty and inventive step is nevertheless given.
This was not the case here. The request for ex parte interim injunctive relief was dismissed and the defendant was given the opportunity to reply.
— WHAT’S UP ON THE MARKET —
Patentees are Martin BÄCHLER and Jürg BÄCHLER, who are members of the board of directors of Valoc AG. In my perception, the retention inserts for the fixation of Valoc’s Novaloc™ matrices are products according to the patent in suit.
For more information on this system, please revert to the product brochure and the flyer. To better understand mounting and removal of the retention insert, the following video may help:
There is no indication at all in the decision as to the identity of the defendant.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”
(not identified) ./. (not identified)
Subject(s):
Composition of the Board of the FPC:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— FULL TEXT OF THE DECISION —
Case No. S2014_008 ¦ Decision of 28 October 2014 ¦ “Superprovisorische Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”
— THE DECISION IN A NUTSHELL —
Both Gilead Pharmasset LLC and AbbVie Inc. hold patent applications on the combination of the sofosbuvir and ledipasvir for the treatment of hepatitis C. This combination is marketed by Gilead under the tradename Harvoni™. Gilead has sued AbbVie for assignment of their Swiss patent applications. In first place, a block of the register for these patent application was ordered as an interim measure.
— THE DECISION IN MORE DETAIL —
This decision pertains to new pharmaceuticals for the treatment of hepatitis C.
1. BACKGROUND
Undisputedly, sofosbuvir has been a breakthrough in the treatment of this widespread disease. It is a ribonucleotide analog inhibitor of the RNA-dependent RNA polymerase of hepatitis C virus (HCV).
Sofosbuvir causes chain termination by competing at the triphosphate level with natural nucleotides for incorporation into elongating RNA. The triphosphate serves as a defective substrate for the NS5B protein (which is the viral RNA polymerase), and thus acts as an inhibitor of viral RNA synthesis; see Antimicrob Agents Chemother. 2014 Jul; 58(7): 3636-45.
Sofosbuvir has received the FDA’s Breakthrough Therapy Designation and has been marketed since 2013. Compared to previous treatments, sofosbuvir-based regimens are reported to provide a higher cure rate, fewer side effects, and a two- to four-fold reduced duration of therapy.
In October 2014 a combination of sofosbuvir with the viral NS5A inhibitor ledipasvir was approved by the FDA.
The combination of sofosbuvir and ledipasvir is marketed by Gilead under the tradename Harvoni™; see also the Harvoni™ patient information. It is reported to provide high cure rates in people infected with genotype 1 (the most common subtype in the U.S., Japan, and much of Europe).
Well, and here we are at the very core of this dispute: The rights in the invention of a combination of sofosbuvir and ledipasvir. Some indication of this issue is already contained in Thomson Reuters’ report to the WHO on the patent situation of sofosbuvir (see Patent 2, p. 16-17), the respective report on ledipasvir (see the Note in the Summary on p. 11) and newsfeeds such as e.g. Knowledge Ecology International or Biospace.
2. WHO ACTUALLY INVENTED IT?
This question will be dealt with in co-pending main proceedings (O2014_013). Both parties had filed patent applications on this combination of drugs. The present decision only deals with a block on the register as an interim measure (see below). However, the plaintiff exhaustively argued on the merits of his rights in the invention, in order to get the block on the register issued. And, indeed, it was issued even without hearing the defendant beforehand.
The plaintiff essentially argued as follows:
As the legal successor of Gilead Sciences, Inc., Gilead Pharmasset LLC owns all rights and interest in this invention that is subject of patent applications (for the assignment see the request for a change under R. 92bis PCT and the corresponding notification issued by the WIPO). An outline of this patent family is shown below. Claim 3 of WO 2013/040492 A2 is directed to the combination of sofosbuvir (referred to as “compound 10”) and ledipasvir (referred to as “compound 6”).
| Priority applications filed in the U.S.: | ||
| #1 | ||
| #2 | ||
| PCT application claiming these priorities: | ||
| filed | ||
| pub’d | ||
Gilead Sciences, Inc. had acquired Pharmasset LLC in January 2012, incl. the rights to sofosbuvir (PSI-7977). On the other hand, ledipasvir had been developed in-house at Gilead. Gilead’s first priority application had been filed on September 16, 2011 (at a time when a takeover bid for Pharmasset LLC had already been placed), and this application already included the combination of sofosbuvir and ledipasvir (GS-5885) for the treatment of HCV (in particular of genotype 1) for twelve weeks, with or without the further antiviral agent ribavirin, but in any case without interferon. Thus, the plaintiff had been in possession of the invention already on September 16, 2011.
The defendant’s patent applications are outlined below, in chronological order. The two Swiss patent applications that are litigated here are given in the last line. There are two series of applications, one with and one without the yet further antiviral agent ribavirin.
| Priority applications filed in the U.S.: | |||
| #1 | |||
| #2 | |||
| #3 | |||
| #4 | |||
| #5 | |||
| #6 | |||
| #7 | |||
| PCT applications claiming these priorities: | |||
| filed | |||
| pub’d | |||
| Nationalised in Switzerland: | |||
| nat’d | |||
As can be seen, the defendant had filed the first priority application on October 21, 2011, i.e. only after the plaintiff’s first priority application of September 16, 2011. Ledipasvir as such is not referred to by the defendant in his first priority application, but rather only the identifier GS-5885. Neither the chemical structure is given, nor the specific combination of GS-5885 and sofosbuvir. The plaintiff points at two peculiarities in the subsequent time line of the defendant’s priority filings:
First, the plaintiff had mentioned the combination of GS-5885 and sofosbuvir for the first time in an investor phone conference on February 02, 2012. However, the structure of GS-5885 had not been made publicly available. About two weeks later, the fourth priority applications had been filed and disclose the specific combination of sofosbuvir and GS-5885 for the first time in the series of priority applications.
Second, only the sixth priority applications of the defendant (filed June 06, 2012) disclose the structure of ledipasvir / GS-5885. This is about six weeks after the plaintiff had made the structure of GS-5885 publicly available for the first time on April 18, 2012 at the 25th International Conference on Antiviral Research in Sapporo, Japan. The defendant does not rely on clinical data in the patent applications, but rather used computer models to predict the advantageous combinations of drugs.
3. NOW, WHAT HAS BEEN DECIDED?
Both parties are domiciled in the U.S.; competency for interim measures is thus governed by Art. 10 IPRG. The requested interim measures aim to preserve the status quo for as long as the assignment suit has not yet been decided in co-pending main proceedings (O2014_013). In main proceedings, the courts of Switzerland have jurisdiction (Art. 109(1) IPRG; Art. 29 PatA). Moreover, the requested interim measures (block of the register) are to be executed in Switzerland. Competency of the FPC is thus given, and Swiss law is to be applied (Art. 110(1) IPRG).
Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). Prima facie evidence is sufficient. Further, a certain urgency must be given and the requested interim measures must be proportinate. The FPC held that all these prerequisites were fulfilled in the present matter. The block of the register was ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.
It remains to be seen how the defendant defeats the allegations. The defendant will now belatedly be heard and the FPC will then finally decide on the requested interim measures (Art. 265(2) CPC).
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2014_008 ¦ Decision of 28 October 2014 ¦ “Superprovisorische Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”
Gilead Pharmasset LLC ./. AbbVie Inc.
Subject(s):
Composition of the Board of the FPC:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— FULL TEXT OF THE DECISION —
Case No. S2014_007 ¦ Decision of 30 October 2014 ¦ “Mitwirkungspflicht des Arbeitnehmers bei Patentanmeldungen (Arbeitnehmerpflicht)”
— THE DECISION IN A NUTSHELL —
If the actual rights in the invention of a former employee reside with the former employer, it is an element of the former employee’s duty and care under Art. 321a CPC to sign documents that are necessary to secure the rights of his former employer. In summary proceedings (as a remedy in clear cases), the FPC ordered an unwilling former employee to execute an assignment document (actually, an assignment confirmation) required for proceedings before the USPTO.
— THE DECISION IN MORE DETAIL —
The present matter pertains to US patent application No. 13/994,494, published as US 2014/0196608 A1.
It was undisputed that the defendant had been an employee of the plaintiff and that he had been involved in the development of the invention for which protection is sought for with the aforementioned patent application. Moreover, the defendant did not claim any rights in this invention, but rather acknowledged that the respective rights to this invention reside with the plaintiff. The actual course of correspondence between the parties prior to the proceedings was also beyond dispute.
Nevertheless, the former employee had refused to sign the necessary assignment form (and the declaration) to be filed with the USPTO; see the excerpt from the public file wrapper that is available via the PublicPair service of he USPTO. He argued that this could result in his exposure to being sued in the US by a potential third party. Towards this end, the plaintiff provided a hold harmless declaration:
Gerne können wir Ihnen hiermit eine rechtsverbindliche Erklärung abgeben, dass die Delica AG Sie für einen — allfällig eintretenden — Schaden, der sich wider Erwarten aufgrund von Ansprüchen Dritter im Zusammenhang mit der Unterzeichnung der beiden für das US Patent and Trademark Office bestimmten Dokumente und der Eintragung des Patents in den USA ergeben könnte, selbstverständlich vollumfänglich schadlos halten wird.
In addition, the defendant had been offered a reimbursement for his legal expenses, since he had seeked legal advise in the present matter. The defendant alleged to have had expenses of CHF 123’000,–, and he issued an invoice on this sum to the plaintiff. This was obviously not the order of magnitude the plaintiff had in mind when a reimbursement of expenses was offered.
Furthermore, the defendant suggested a kind of trade-off: He would sign the requested documents for the (utility) patent application at stake, if the plaintiff in turn would withdraw the design patent application US D689,768 S, or designate him as inventor. According to the defendant, he had been involved in the generation of the respective design, too. This was rebutted by the plaintiff.
During the proceedings, the defendant alleged that his linguistic proficiency in English was not sufficient to understand the documents that he was expected to sign. The FPC held that this was implausible for various reasons: i) in view of the defendant’s curriculum vitae; ii) since even a moderate understanding of the English language would be sufficient; and iii) in view of the fact that he was advised by a patent attorney of English mother tongue (Da Vinci Partners).
The FPC emphasised that with due execution of the assignment the defendant would actually not acknowledge anything more than what he had already confirmed beforehand, i.e. that all rights in the invention reside with the plaintiff:
I agree to sign all papers necessary to secure all said patents and rights, and request issuance of all such patents to said Delica AG.
In sum, the FPC held that the relevant facts were undisputed and the legal situation was clear (Art. 257 CPC). The defendant was thus ordered to provide the plaintiff with the executed assignment document within a short time limit of only 10 days, under the threat of a criminal penalty for non-compliance (Art. 292 CC).
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2014_007 ¦ Decision of 30 October 2014 ¦ “Mitwirkungspflicht des Arbeitnehmers bei Patentanmeldungen (Arbeitnehmerpflicht)”
Delica AG ./. Cristian Popescu
Subject(s):
Composition of the Board of the FPC:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
Case No. S2014_006 ¦ Decision of 06 October 2014 ¦ “Kaltmilchschäumer: Gutheissung vorsorglicher Massnahmen (Patentverletzung); Anforderungen Glaubhaftmachung offenkundige Vorbenutzung; Anforderungen Sicherheitsleistung”
— IN A NUTSHELL —
A prior use as prima facie evidence in a plea of nullity is frequently cumbersome — and was unsuccessful here. The prior use had allegedly occured already more than 10 years ago. The defendant did not provide a binding cease and desist declaration; preliminary injunctive relief was granted. It was not even made conditional on the payment of a security by the plaintiff since the defendant had repeatedly argued that the allegedly infringing machines were no longer marketed anyhow. Thus, the FPC did not anticipate that the measures may cause loss or damage to the defendant (Art. 264 CPC).
— IN MORE DETAIL —
Milk frothers are frequently litigated in Switzerland. You might perhaps recall the decisions “Milchschäumer“ and “Milchschäumer II“ a few years ago. The present case is apparently not related to the old ones, but again pertains to a milk frother. Fortunately, catchwords are not confusingly similar: This time, it’s a milk frother for cold milk (Kaltmilchschäumer).
i) BACKGROUND OF THE CASE
One of the plaintiffs is the patentee of both patents in suit, i.e. a Swiss patent and a European patent. The other plaintiff is a member of the same group of companies. However, the parties are anonymized in the decision.
Nevertheless, from the wording of the requests and the technical details given in the decision, it is evident that CH 707 091 B1 and EP 2 120 656 B1 are the patents in suit. The patentee is Steiner AG Weggis. A connected undertaking of Steiner AG Weggis is Thermoplan AG — quite likely the second plaintiff. Never heard? Thermoplan manufactures the machines that Bloomberg recently referred to as “Starbucks’ secret weapon“.
Opposition/appeal proceedings are currently pending against EP 2 120 656 B1. The online file wrapper at the EPO is insightful: Franke Coffee Systems GmbH of Germany intervened as a party (under Art. 105 EPC), since proceedings for infringement of that patent had been instituted against them. In the intervention, it is referred to two summary proceedings at the regional court of Düsseldorf (Germany), i.e. 4a O 52/14 and 4a O 81/14 (the fulltext of the intervention is available here). No further details on these proceedings are available to date, but the present decision of the FPC also refers to two “corresponding decisions in summary proceedings” at the regional court of Düsseldorf on the German part the patent in suit. There are some further hints in the decision; in sum, it is abundantly clear to me that Franke Coffee Systems is involved as the defendant (i.e. the Swiss member of the Franke group of companies, Franke Kaffeemaschinen AG).
The European patent was maintained in slightly amended form by an Opposition Division (OD) of the EPO; see the Druckexemplar of the interlocutory decision of the OD. Appeal proceedings are still pending. The independent claims as maintained by the OD read as follows (markup vis-à-vis EP 2 120 656 B1 as granted:
1. A method for the production of milk foam or milk-based drinks, wherein milk is sucked with a pump (1) out of a container (3, 3′) and conveyed to an outlet (11′), air or a gas being added to the milk, whereby the milk/air mixture is processed in a cold
or hotstate into milk foam and conveyed as cold or hot milk foam to the outlet (11′), characterised in that
the milk or the milk/air mixture, which is sucked by the pump (1) und mixed with the air respectively the gas, is selectively conveyed via a throttle point (12) directly or via a flow heater (16) to the outlet (11′).
2. An apparatus for implementing the method according to claim 1, having a pump (1) sucking the milk from a container (3, 3′) via a suction line (2), having an outlet line (10) leading from the pump (1) to an outlet (11′), having an air supply line (5) opening out into the suction line (2), characterised in that the outlet line (10) has two parallel sections (10a, 10b), which can be enabled selectively by means of a valve (15) between the throttle point (12) and the outlet (11′), a flow heater (16) being assigned to one of these outlet line sections.
ii) WORDING OF THE REQUESTS
The proper wording of requests for injunctive relief is a matter of ongoing discussion amongst practitioners. Swiss case law strictly follows the rule that a request must be precise enough to allow enforcement of the prohibition by mere factual inspection; see e.g. this Blog here (with further reference). The present request for preliminary injunctive relief is quite lengthy. But it is a good example of a request that makes use of photographic illustrations of the infringing features to meet this goal (in German language, but you will get the idea):
Moreover, the request did not reach beyond the scope of the patents. Consequently, the FPC held that the wording of the requests was formally allowable.
iii) CLAIM CONSTRUCTION
Construction of the term “throttle point (12)” was under dispute. Clearly, this throttle point converts the milk/air mixture to a milk foam. In a function-oriented construction of the term, the FPC first clarified the terms “milk/air mixture” and “milk foam”. There is neither a precise definition in the patents nor have the parties provided any commonly accepted definition. A Ph.D. thesis of Katja BORCHERDING was not held sufficient since it only relied on a single reference for an amount of 0.5-0.97 vol.% of air in a milk foam. The term “milk/air mixture” was thus construed very broadly as “any mixture of air and milk”, thus also encompassing “milk foam”.
As to the contribution of the throttle point, the FPC held that this is any kind of bottleneck that at least contributes to the formation of a milk foam.
iv) ALLEGEDLY INFRINGING EMBODIMENT NO LONGER IN USE, PRELIMINARY INJUNCTION ISSUED ANYHOW: HOW COMES?
The defendant argued that the allegedly infringing machine had only been produced and sold from January 2013 to February 2014. It had then been replaced by a new machine with a different (allegedly non-infringing) milk frother. However, the defendant did not provide any arguments as to why the contested embodiment would not infringe the patents in suit. The FPC considered the legitimate interest of the plaintiff ex officio (Art. 59 CPC). A danger of repetition of the alleged and undisputed infrigement remained since the defendant did not declare to cease and desist; cf. BGE 124 III 72, r. 2a and BGE 128 III 96, r. 2e. Moreover, validity of the patents was still disputed, and even the allegedly non-infringing machine was illustrated with a diagram that still carried the name of the contested device. In sum, the FPC held that the legitimate interest in preliminary injunctive relief still remained.
A threat of a not easily reparable harm was acknowledged for the reason alone that it would be difficult for the plaintiff to later on prove the causality of the harm to have occured from the infringement. Urgency of the matter was not compromised by the fact that the plaintiff had awaited the outcome of the decision of the OD of the EPO; this was rather appreciated as prudent by the FPC.
v) PRIOR USE: REQUIREMENT OF PRIMA FACIE EVIDENCE
The defendant argued for nullity of the patents in suit. Besides some further prior art documents (see below), nullity was argued in view of a prior use “Esprè Magic”. This prior use had been documented in corresponding opposition proceedings before the EPO with the following documents:
Note that the prior use had occured already more than ten years ago. Two affidavits in support of the prior use and the technical details thereof were put on file by the defendant when the plaintiff had disputed the public availability and the relevant technical details of “Esprè Magic”. These affidavits were not supported with further documentary material. Moreover, the affidavits were not free from inconsistencies. Thus, the FPC was reluctant in considering these declarations. Apparently, the Regional Court of Düsseldorf came to the same conclusion in parallel proceedings in Germany. Moreover, it was not only that the FPC had doubts as to whether a prior use had actually occured or not. Even the technical details of the alleged prior use were held to be not sufficiently clarified by prima facie evidence to be considered novelty-destroying for the patents in suit.
vi) FURTHER PRIOR ART DOCUMENTS
Novelty of claim 1 of CH 707 091 B1 over R4 (i.e. EP 0 485 350 A1) was disputed. The decision highlights two decisive issues: First, the term “throttle point (12)” was construed very broadly (cf. above), and thus the bottleneck in conduit 6 of R4 was identified as to fulfil this feature. Second, it was required that the milk foam be conveyed to the outlet in a cold state. R4 discloses that the conduits 3 and 6 can be held at room temperature, thus with inoperative heating elements 10. Accordingly, the FPC held that a prima facie lack of novelty of claim 1 of CH 707 091 B1 was given.
To the contrary, it was held that no prima facie case of lack of novelty or inventive step of claims 1 and 2 of EP 2 120 656 B1 had been established. The FPC essentially followed the reasoning of the OD of the EPO in consideration of R4 and R6 (i.e. US 6,192,785 B1).
vii) SECURITY
The FPC could have made the interim measure conditional on the payment of security by the plaintiff, but (only) if it had been anticipated that the measures may cause loss or damage to the defendant (Art. 264 CPC). The defendant requested a security of CHF 2’000’000,–, but the FPC stressed that the defendant had repeatedly argued that the allegedly infringing machines are no longer marketed anyhow. Therefore, one would not anticipate that the preliminary injunction could cause loss or damage to the defendant.
viii) WHAT’S UP ON THE MARKET
The allegedly infringing machines are not identified in the decision. But in the meantime it has become a rubber-stamping excercise for me to dig a bit deeper into what is actually happening on the market. I have learned from followers of this blog that this is highly appreciated. So, these are the snippets of information that I could gather from the internet:
The world premiere of the Franke FoamMaster™ FM800 (flyer dated 12/12; CH and DE) was in early 2013 in Switzerland (see gourmet 4/13). Consequently, this machine was also promoted on the Franke website back in 2013 as the new premium device:
However, the FM800 is no longer promoted on the Franke Website for Switzerland (see screenshot of August 13, 2014 below). The same holds true for the Website for Germany. No signs of the FM800 machine anymore. Seemingly, the FM800 has been replaced by a machine FM750 (flyer dated 07/14; CH):
Thus, the FM800 would perfectly match the bibliographic criteria of the allegedly infringing machine at stake in the present decision. I have found a detailed technical booklet on the FM800 machine on the internet, with a water flow diagram (Wasserlaufschema) on p. 320:
This illustration looks strikingly similar to the one reproduced on p. 6 of the decision, but details are scarcely visible in the decision. Pump P100 and restrictor BL0.8 are referred to in the decision, and are also visible on the right side of the above water flow diagram. In my personal opinion, all these are strong technical indications towards the FM800 machine.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2014_006 ¦ Decision of 06 October 2014 ¦ “Kaltmilchschäumer: Gutheissung vorsorglicher Massnahmen (Patentverletzung); Anforderungen Glaubhaftmachung offenkundige Vorbenutzung; Anforderungen Sicherheitsleistung”
(not identified) ./. (not identified)
Subject(s):
Composition of the Board of the FPC:
Representative(s) of Plaintiff:
Representative(s) of Defendant:
— FULL TEXT OF THE DECISION —
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