Deferasirox not only chelates iron, but also the scope of numerical ranges

Reading time: 6 minutes

Case No. 4A_273/2023 (SC) | Judgment of 25 September 2023
on appeal against
Case No. O2021_004/5 (FPC) | Judgment of 20 April 2023 | ‘Deferasirox’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of Mepha.
deferasirox

This case is about deferasirox, an iron chelating agent. It is mainly used to reduce iron overload in patients who are receiving long-term blood transfusions in the treatment of chronic anemias.

The FPC has been busy with deferasirox since early 2021 in litigation between Novartis and Mepha. The crucial feature in terms of infringement was the amount of deferasirox. In short, the independent claims of both patents, EP 202 and EP 018, require 45-60% by weight of deferasirox. The attacked embodiment contained 64.3% by weight.

Now, is that an infringement?

It’s apparently been a tricky thing for the FPC:

    • On request of Novartis, a PI had been issued by the FPC with judgment of 15 December 2021, in view of an infringement under the DoE; see this Blog here.
    • In main proceedings, the outcome was different. With judgment of 20 April 2023, the FPC (with an enlarged panel of five judges) ruled that there was no infringement under the DoE. See this Blog here.

Novartis appealed, and the Supreme Court meanwhile affirmed the FPC’s finding of non-infringement under the DoE.

What the supreme court said

The FPC had answered the first and the second question of the three prong questionnaire in favor of Novartis. Not so for the third question with respect to ‘equal value’. Accordingly, Novartis’ whole appeal was only about the FPC’s assessment of the third question:

First, the Supreme Court summarizes what the FPC had held: The disclosure of a preferred value in conjunction with a claim that spells out a numerical range that comprises this preferred value is legitimately understood by the skilled person as a waiver of the patentee for values outside of the claimed range:

The Supreme Court has no issues with this assessment. On the contrary (my translation; emphasis added):

[T]the appellant does not explain the purpose of the precisely defined numerical range in the claim, which comprises the preferred value in the description, other than a waiver of values outside the exact range. If the patent proprietor does not wish to be limited to such a range and does not wish to exclude general tolerances beyond this, it is up to it to formulate its claim accordingly. The appellant is responsible for the fact that it did not define a broader or openly phrased numerical range in the claim without providing clear indications that the range could be exceeded.

Putting it differently later, the Supreme Court held (again, my translation; emphasis added):

It cannot be inferred from [the patents in suit] that compliance with the specifically claimed numerical values is not important. In this respect, the assessment of the lower court is in line with BGE 143 III 666, r 5.5.3, where it is stated that the limitation of the scope of protection to the literal embodiments is justified insofar as the third party skilled in the art may understand the patent in such a way that the proprietor has excluded protection for the equivalent embodiments. Whoever expresses his intention expressly or implicitly must be bound by the meaning of his conduct which the addressee may in good faith attribute to this expression.

In my reading, this puts an end to any discussion of infringement under the DoE in the standard cases of a numerical range in the claim and examples within that range in the spec. It remains to be seen whether (or not) specific examples outside of the claimed range, or other strong indications that the invention also works outside of the claimed range, would actually be helpful. I have my doubts. I feel that this might probably even underline the intention of precisely the narrowly claimed range. We shall see. Someone will surely test this out, sooner or later.

what the supreme court did _not_ say

The FPC had tried to get clarification from the SC with respect to Q2 (‘accessibility’), too:

However, the SC did not jump on it in the case at hand. Novartis’ appeal only pertained to Q3 (‘equal value’), and the SC could decide on the appeal without the need to dive into the ‘accessibility’ discussion.

We will thus have to live with Q2 as it stands for a little longer. But clarification is clearly needed. To me, the current assessment of Q2 in retrospect is devoid of any meaning. I stand to be proven wrong, but I believe it is a bogus question that will hardly ever be answered in the negative.

✍ MW

BIBLIOGRAPHY

Case No. 4A_273/2023 (SC) | Judgment of 25 September 2023
on appeal against
Case No. O2021_004/5 (FPC) | Judgment of 20 April 2023 | ‘Deferasirox’

Novartis AG
[Appellant / Plaintiff]
./.
Mepha Pharma AG
[Respondent / Defendant]

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    • Dr. Matthias LEEMANN

Representative(s) of Appellant / Plaintiff:

Representative(s) of Respodent / Defendant:

SUPREME COURT JUDGMENT
→ Appeal dismissed
Case no.: 4A_273/2023
Judgment of: 25 September 2023

PATENT COURT JUDGMENT
→ Main proceedings: No infringment under the DoE
Case no.: O2021_004 / O2021_005
Judgment of: 20 April 2023

PATENT COURT PI
→ Summary proceedings: Infringment under the DoE
Case no.: S2021_005
Judgment of: 15 December 2021

PATENTS IN SUIT

EP 2 964 202 B1:

See EPO Register and Swissreg for bibliographic details.

EP 2 964 202 B2:

See EPO Register and Swissreg for further information.

EP 3 124 018 B1:

See EPO Register and Swissreg for further information.

EP 3 124 018 B2:

Not yet available. But the OD has already issued the new DREX:

See EPO Register and Swissreg for further information.

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For discussion: The Supreme Court should get more involved in patent cases. Not less!

Reading time: 15 minutes
Question of law, or fact, or what?!

When I first read about questions of law (‘Rechtsfragen‘) and questions of fact (‘Tatfragen‘) in my younger years, I memorized something like this:

    • Questions of fact can be proven, and – as a rule – evidence is required.
    • Questions of law can be answered by applying the law to the facts at hand.

And I felt like «okay, got it; what’s next?» My goodness, how naïve I was. Much smarter people than I have been racking their brains over this for a long time. Meanwhile I feel more like there just is no clear and workable solution for differentiating between the two terms. I have once been told with a smirk that anyone who says otherwise just hasn’t thought about it long enough. There is undoubtedly some truth in that.

Why does the disctinction between questions of law and questions of fact matter?

It matters because the Supreme Court (SC) bases its judgments on the facts established by the lower court (Art. 105(1) SCA). It may correct or supplement the lower court’s findings of fact only if they are obviously incorrect or based on a violation of law within the meaning of Art. 95 SCA (e.g. the PatA); moreover, the correction of the defect must be decisive for the outcome of the proceedings (Art. 97(1) and Art. 105(1) SCA). According to the established case law of the SC, «obviously incorrect» means «arbitrary». The bottom line at least in my experience in patent matters is that the hurdle to get facts corrected on appeal is … anything but a hurdle; it’s effectively a wall.

But there is still a glimmer of hope in any appeal: The legal issues!

Malicious gossip has it that it is always a question of law when the SC wants to decide it. Otherwise, it is not. I cannot know.
The skilled person, a FREAKY species

The most controversial issues in patent litigation are to be decided from the viewpoint of the skilled person. Novelty, (non-)obviousness, sufficiency of disclosure, allowability of amendments, … it all hinges on how the skilled person understands and approaches the matter. To complicate things even further: The skilled person is a legal fiction (Bernard CORBOZ in OJ EPO 2009, Special ed. 1). And what a weird guy he is! With reference to Lord REID in 1972 R.P.C. 346, Sir Robin JACOB put it like this:

It is settled that this man, if real, would be very boring — a nerd.

Oh, and he is also very forgetful, as JACOB rightly pointed out:

Beware of nerds

So, in a nutshell, some of the most controversial – and interesting – issues in patent litigation are to be decided from the viewpoint of a fictionary person, a somewhat skilled but very forgetful nerd (oh, or maybe even an assembly of nerds).

There is good and bad about this. Thinking about appeals to the SC:

✅ Good is that whatever that legal fiction of a skilled person understands or does cannot be a question of fact; what a legal fiction thinks or does is a question of law. As the German Supreme Court put it in X ZR 255/01 — Bodenseitige Vereinzelungsvorrichtung:

Accordingly, the SC should have a look at it.

❌ There will hardly ever be a universal truth: The skilled nerd simply cannot be asked. Accordingly, it can hardly ever be said that a first instance assessment is objectively wrong. We need to live with what comes closest to what is right. What is more, most patent cases are technologically quite demanding, and the FPC has judges with a technical training on the bench. Unlike the Supreme Court. All this might well result in quite some hesitation to intervene. The first instance assessment may easily amount to an anchoring fact, resulting in an anchoring bias in one’s own re-assessment. That would be bad (very bad).

Now, what are the chances of an appeal?

When filing an appeal in patent matters in Switzerland, one should not be overly enthusiastic about it. Chances are close to zero. By way of example, let’s have a look at the last calendar year (snapshot from the FPC’s annual report for 2021):

Statistics with small numbers are always a struggle. But 2021 was not an exception. In 2020, the SC dealt with 11 cases in patent matters: Eight appeals were dismissed, one was shelved, yet another one remitted to the FPC for further consideration / to complete the facts (the case was about the recusal of a judge for the appearance of bias; the skilled nerd couldn’t care less) — and only a single appeal was allowed. The latter undoubtedly pertained to a question of law, i.e. (im)proper novae (not an issue for the skilled nerd either).

So, just looking at the last 2.5 years: Not a single appeal has been allowed on the FPC’s assessment of how a skilled nerd approached the matter. Looking further back in time does not change much in this respect. From the top of my head, I do not recall a single appeal where the SC overruled the FPC’s assessment of what the skilled nerd had (not) understood from a piece of prior art or had (not) been prompted by the prior art to do in the expectation of some advance.

Yes, I know, there was ‘Fulvestrant’. But I feel that 4A_541/2017 does not count because the SC only corrected how the ‘objective technical problem’ was to be phrased when starting from an insufficiently disclosed closest prior art document. Interesting. But how the ‘objective technical problem’ is to be phrased is not sth the skilled nerd is concerned with. It’s a technicality of the problem-solution approach. What I am looking for is an intervention e.g. at the «could/would-approach» stage. But I could not find any.

As always, I stand to be proven wrong, but it appears that the SC never had any issues with the FPC’s assessment of what the skilled nerd would (not) have understood or done. Whenever the FPC ruled on such an issue, i.e. when it stepped into the shoes of the skilled nerd, the SC never intervened.

Now, what does that tell us?

Always right …?

I would love to think that the FPC hands down perfectly right judgments in each and every case, to the extent the actual assessment of a case on the merits from the viewpoint of the skilled nerd is concerned.

But, frankly: How realistic is that?

If you have ever attended a high stake hearing with attorneys seriously arguing a borderline case on obviousness, you will appreciate that there can hardly ever be a universally correct b/w decision. (And most cases at the FPC are borderline cases; that’s why reasonable parties need to involve the court.) Putting oneself in the shoes of the skilled nerd and to decide on what he would (not) have understood or done back in the days is anything but easy, and the outcome is almost never non-controversial. Accordingly, shouldn’t it raise an eyebrow when first instance decisions on the nerdish issues of novelty, obviousness, sufficiency of disclosure and allowability of amendments are practically never lifted?

Meanwhile, in Germany …

According to  the most recent Busse/Keukenschrijver (9th ed. 2020; §110, no. 18), about 50% of all nullity decisions of the Federal Patent Court in Germany are lifted by the Supreme Court (BGH):

total # conf’d # lifted #
2017 33 16 (48%) 17 (52%)
2018 41 22 (54%) 19 (46%)

At closer scrutiny, the BGH mostly amends the FPC’s decision in the patentee’s favour (which fits well with the FPC’s reputation as the ‘graveyard of patents’). Still, some decisions are also amended in the plaintiff’s favour:

lifted # pro pat. # pro plt. #
2017 17 14 (82%) 3 (18%)
2018 19 18 (95%) 1 (5%)

[pro pat., decision amended pro patentee; pro plt., decision amended pro plaintiff]

The FPC apparently errs in a substantial number of cases. At least the FPC in Germany does. And the BGH does not shy away from correcting the assessment on the merits of a case. Notably, in my understanding, the legal framework is essentially the same as in Switzerland (cf. §110 and §111 DE-PatA).

… and at the EPO

The ODs of the EPO have a huge experience in re-assessing novelty, obviousness, sufficiency of disclosure and allowability of amendments of granted patents. Thousands of European patents are opposed each and every year (e.g., 3’247 patents were newly opposed in 2020, and 1’912 opposition cases were decided in 2020 by the ODs in first instance).

With such a wealth of experience (over decades!), there should hardly be any wrong decisions anymore. One would think so. But far from it. The BoA constantly sort out about 60% of all first instance decisions, each and every year:

Don’t get me wrong, this is not because the ODs do a bad job. Actually, they do a fantastic job to very large extent, in my experience. It is simply because people make mistakes — despite their vast experience. We all do.

I conclude from all this that one might reasonably assume that a typical first instance decision assessing validity of a patent from the point of view of a skilled nerd in inter partes proceedings should be lifted with quite a high likelihood when a second instance really re-assesses the case. Not so in Switzerland. The FPC has a perfectly clean record.

I had been chewing on this issue for quite a while when I came across a recent comment in the NZZ that approached the matter from a different perspective.

But let’s first have a closer look at the SC.

Ever more federal judges?

The SC has been struggling with its heavy workload for years. In 2021, the number of pending cases increased even further (3’235 at the end of last year).

In parallel, the overall chances to succeed (in full or in part) with an appeal in civil matters fell to the lowest rate (ever?) over the last ten years in 2021, i.e. 9.8%.

I cannot know whether this trend is just coinciding with the ever increasing workload at the SC, or whether there is a causal link. But, in any event, it is a remarkable — and worrying — trend on its own.

To fight the backlog, the SC inter alia requested that two further judges were appointed, to increase the total number of judges from 38 to 40; see e.g. the latest annual report of the Supreme Court.

In a recent guest comment in the Neue Zürcher Zeitung (NZZ), Ulrich MEYER (the former President of the SC; meanwhile retired) came up with a totally different proposal: The SC should be given more leeway to accept appeals in the first place, or to dismiss them without giving reasons. By far the most appeals did not pertain to questions of law anyway. Rather, arbitrariness is asserted: As MEYER put it, mostly questions of fact in disguise are concerned; the «easiest trick of attorneys.» (That sounds a bit like cheating, doesn’t it?)

However, the Supreme Court has to assess assertions of arbitrariness — and to at least give summary reasons for dismissing such appeals. Too much of a burden!

MEYER suggests to dispense therewith, and to actually reduce the number of judges to only 20. That would be enough staff to get the really important(?) things done. Two follow-up comments have been published in the NZZ: Arnold MARTI dissented and Karl SPÜHLER largely consented with MEYER.

What kind of Supreme Court should we want?

MEYER’s proposal rang alarm bells with me; see my first thoughts on LinkedIn. I am convinced that it would be a disaster in patent cases. The FPC is the first instance in patent infringement and validity litigation, and appeals go directly to the SC:

If the SC would not even give its summary reasons anymore when it dismisses an appeal, the whole appeal stage will likely be perceived as a mere rubber-stamping exercise. I would not want it that way.

Btw, MEYER is right in this respect: We mostly do see only very brief summary reasons. It sometimes feels like a resounding slap in the face of the appellant: How could you even bring this argument?! It could go like this:

However, appellant is not able to show a violation of Art. … [123 / 54 / 56 EPC, you name it] by merely contrasting the understanding of the lower court, according to which … [citing a bit from the judgment under appeal], with its contrary view. The lower court is not to be accused of a violation of law when it … [yet another bit from the judgment under appeal]; rather, the lower court comprehensibly pointed out … [and yet another bit from the judgment under appeal]. The appellant merely criticizes this reasoning in a sweeping manner as arbitrary; appellant is also unable to substantiate in more detail to what extent … [citing a bit from the appeal brief].

I frequently fail to spot much of a critical re-assessment in such a line of citations. It comes along as summary reasons, but effectively it’s sometimes not even that. Still, both practitioners and the lower court have something to consider, to learn, or to just struggle with. Summary reasons is not much, but it is something.

But, sometimes, I have radical thoughts:

Wouldn’t it be fantastic if the SC would really (and eagerly!) dive into the nitty gritty details of the most demanding technical issues and openly re-assess them from the viewpoint of the skilled nerd?

What if the Supreme Court would not leave practitioners with the impression that it presumed just another factual critcism in disguise (as MEYER put it) but would rather jump on the subject-matter under appeal to get close(r) to what is right?

In any event, wouldn’t it be great to read more than just summary reasons, maybe even reasons that set precedents for other cases to come? It really is not that all is settled about what the skilled nerd would have understood or done in a given situation. Far from it. On the contrary, I truly feel there is even room for brave landmark judgments in this respect that would be cited elsewhere. Just like Supreme Court judgments from the U.K. or Germany. Judgments are not cited elsewhere because they are right (or wrong); they are cited because they are convincingly – if not even brilliantly – reasoned and thereby set a precedent. I sometimes read high stake UK judgments on a Sunday afternoon, just because they are outstanding reads, with a well elaborated reasoning that sheds light on all facet of the arguments so that the interested reader cannot but concur in the end: Amen, that’s right, indeed. BGH judgments from Germany are of a different kind: Rarely entertaining, but with a razor-sharp analysis of the key issues.

What if we even had a specialized IP chamber at the Supreme Court? This would be nothing out of the ordinary: The BGH meanwhile has two IP chambers (the X. civil chamber exclusively hears patent cases; the I. civil chamber deals with copyright and other IP). In view of the lower case numbers in Switzerland, a combined chamber might make sense for Switzerland.

It ain’t gonna happen, you think?

Well, maybe you’re right. But I see it differently: Switzerland has been named the most innovative country in the world in WIPO’s Global Innovation Index 2021 — the eleventh(!) time in a row. Intellectual property, and patents in particular, cannot be underestimated in this respect: The detailed scorecard shows that Switzerland leads the pack in terms of patents and knowledge creation. I truly feel a specialised IP chamber at the Supreme Court that positions itself as a trailblazer in IP matters would make perfectly sense to reflect this position.

UPDATE 1 September 2022: I have just been pointed to a very interesting article about how the jurisprudence of the Supreme Court evolved over time. I was only scratching the surface. Mark Schweizer compiled a lot more data and insight here: Vom Umgang des Bundesgerichts mit steigender Geschäftslast
– lieber schnell als sorgfältig?, in: «Justice – Justiz – Giustizia» 2016/2.

/MW

Ulrich MEYER, guest comment in NZZ of 20 July 2022:

Arnold MARTI, guest comment in NZZ of 8 August 2022:

Karl SPÜHLER, guest comment in NZZ of 11 August 2022:

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Illumina ./. MGI: Appeal dismissed

Reading time: 4 minutes

Case No. 4A_11/2022 (Supreme Court) | Judgment of 27 June 2022, on appeal against O2019_007 (FPC) | Judgment of 19 November 2021 | ‘Gene sequencing’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the Appellant / Defendant, Latvia MGI Tech SIA.
Illumina logo

Illumina Cambridge had sued Latvia MGI Tech for infringement of two patents, i.e. EP 1 530 578 B1 (cf. EPO Register and Swissreg) and EP 1 828 412 B2 (cf. EPO Register and Swissreg). As mentioned earlier on this Blog here, the FPC held in the judgment of 19 November 2021 that both patents are valid (EP 578: ¶33 et seqq; EP 412: ¶53 et seqq.) and infringed (EP 578: ¶84 et seqq; EP 412: ¶91 et seqq.).

MGI logo

Latvia MIG Tech SIA appealed. Unsuccessfully, to large extent. Only the apportionment of costs was slightly corrected by the Supreme Court (20/80 instead of 10/90). On the merits, however, the Supreme Court had no issues with the FPC’s findings concerning Illumina’s legal interest / actual infringing activities in Switzerland; validity of EP 578 (non-obviousness over WO 02/29003 A2 in view of Zavgorodny et al. (1991)); and validity of EP 412 (no unallowable amendments; claim construction / novelty over US 6,355,420 B1; non-obviousness over Braslavsky et al. (2003) in view of van Dijk et al. (2004)).

I had felt that this case was a great opportunity for some clarification and guidance about the limits of claim construction in good faith; and allowability of amendments. To just name a few. But the Supreme Court did not jump on these issues. In view of my involvement in the matter, I will refrain from a critical review of the judgment. There is this famous saying of Nelson Mandela:

I never lose. I either win or learn.

Well, my immediate reactions are sometimes not very Mandela-like.

Meanwhile, Illumina and the MGI group have settled their corresponding US litigation; see Illumina’s SEC filing and MGI’s press release. Inter alia, a jury verdict in proceedings before the Delaware District Court had held that Illumina’s US patents 9,217,178 B2, 9,303,290 B2 and 9,970,055 B2 (all corresponding to EP 412 that had been asserted in Switzerland) were invalid. On the other hand, the jury held that Illumina infringed on CGI’s US patents 9,222,132 B2, 10,662,473 B2 and that these patents were valid. In the settlement, Illumina inter alia agreed to a one-time payment of USD 325m, largely in line with the jury-awarded damages.

/MW

BIBLIOGRAPHY

Case No. 4A_11/2022 (Supreme Court) | Judgment of 27 June 2022, on appeal against O2019_007 (FPC) | Judgment of 19 November 2021 | ‘Gene sequencing’

Latvia MGI Tech SIA
(Appellant / Defendant)
./.
Illumina Cambridge Limited
(Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
    • Dr. Martha NIQUILLE
    • Dr. Yves RÜEDI

Court Clerk:

    • Dr. Matthias LEEMANN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUPREME COURT JUDGMENT

FPC JUDGMENT

PATENTS IN SUIT

EP 1 530 578 B1:

EP 1 828 412 B2:

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Ever tried. Ever failed. No matter. Try again. Fail again. Fail better. (Until you win?)

Reading time: 7 minutes

Case No. 4A_500/2021 (Supreme Court) | Judgment of 31 January 2022 on appeal against O2020_001 (FPC) | Judgment of 9 June 2021

We have reported about the FPC’s first instance judgment in this patent infringement case between BD and Ypsomed on this Blog here. The Supreme Court now confirmed the FPC’s finding of invalidity of the patent in suit for added matter.

Intermediate Generalisation: EPO approach

The feature at stake was held to be unallowably amended by way of an intermediate generalisation. The FPC followed the strict approach of the EPO in this respect. BD apparently argued on appeal that this approach is too strict, and that e.g. the Supreme Court of Germany takes a more liberal approach (essentially with reference to BGH X ZR 6/18 — Bausatz; see my slides about this case from an INGRES seminar of 1 Feb 2021).

The Supreme Court appreciates that certain national courts (such as the German Supreme Court) might well approach the issue of intermediate generalisation from a different angle (nicely put). However, it is held in no uncertain terms that this is no good reason to deviate from the only recently clarified Swiss practice (4A_490/2020BGE 147 III 337) which is in line with the case-law of the Boards of Appeal of the EPO. What is decisive is what the skilled person can undoubtedly derive from the application as filed.

Now, that’s a clear statement. No deviation from the EPO’s practice re allowability of amendments in Switzerland to be expected any time soon.

Anyway, I truly feel that one cannot simply pick and choose isolated elements from different jurisdictions. It may well appear that the German practice is more liberal with respect to allowability of amendments. But this is, in my perception, not due to a fundamentally different approach. I feel the real difference is the level of skill of the person having ordinary skill in the art (Phosita). In my experience, Phosita in Germany is simply somewhat more clever than, let’s say, at the EPO. Just think about obviousness: Patents that survived EPO opposition proceedings are frequently invalidated in Germany, over the same prior art. I have been through that exercise myself, more than once. Fair enough, there is no right or wrong in this respect: Phosita is a legal fiction anyway. But whatever the level of skill is, it has to be consistently applied in all aspects of patent law — not only in the assessment of allowability of amendments, but also wrt novelty, obviousness and sufficiency of disclosure. A more liberal approach re allowability of amendments would imply a pretty clever Phosita, which in turn would place the hurdles higher with respect to non-obviousness.

A potentially never-ending story?

It has been clear since at least 4A_543/2017 (Fulvestrant) that a re-phrased patent claim presented only at the main hearing is a new fact (‘neuer Sachverhalt’) which was inadmissible under Art. 229 CPC; cf. ¶2.3.

The implications only slowly unfolded later. In 4A_583/2019BGE 146 III 416 (see this Blog here), the Supreme Court held that a partial waiver under Art. 24 PatA after closure of the file was fatal for the plaintiff: The re-phrased patent claim could not be introduced anymore into the proceedings, in view of Art. 229 CPC. And the initially granted patent was not in existence anymore; the partial waiver had ex-tunc effect. Thus, the complaint was dismissed as groundless. However, the Supreme Court also held that the patentee may file a new action based on the partially waived patent; ¶5.3.

This caused some confusion, in view of the earlier Supreme Court judgment 4P.91/1998. In a nutshell, this old judgment held that a patent proprietor can only assert claims against the same attacked embodiment in good faith in one single lawsuit. The apparent clash is nicely summarised in the FPC’s judgment O2018_004, ¶47.

The present judgment of the Supreme Court builds on the Fulvestrant judgment. BD had requested that proceedings at the FPC be stayed until EPO opposition proceedings are concluded. Otherwise, they would be precluded from again suing Ypsomed for infringment if the patent were maintained in limited / amended form. Not in the Supreme Court’s view:

However, this is not the case. The limitation of patent claims — whether verbally in the proceedings before the FPC or with erga omnes effect by the EPO or the IPI, respectively — leads, according to the case law of the Supreme Court, to a new (technical) basis for a claim.

Now, that’s straight to the point, isn’t it? A silent change of practice, in my perception. I would have wished for some mentioning of 4P.91/1998, for my peace of mind and to understand why. The impact of this decision may be huge. I would not be surprised to see practitioners adapt their litigation tactics accordingly:

    • Experiencing unexpected difficulties in establishing infringment by the attacked embodiment? Or did a procedural mishap occur? No worries. Just partially waive the patent (to an extent that is practically irrelevant for the case), bear the costs of the first case because it falls groundless, and then re-start the whole litigation again.
    • Assume the judge-rapporteur’s expert opinion makes clear that your chances of the case as you had put it in the first go are close to zero. However, it is also clear (now) how to fix it. Great! Just partially waive the patent, […].

Such scenarios don’t feel right to me; contrary to the gist of 4P.91/1998. I would very much like to be proven wrong, but it may well be that 4A_500/2021 has opened Pandora’s box.

The right to be heard is no end in itself

The judgment also mentions a minor skirmish between the President of the FPC and BD’s counsel at the main hearing in first instance proceedings. In an attempt to prevent pointless pleadings, the President had indicated at the main hearing that the request to stay the proceedings «will be dismissed», and that reasons will be given in the final decision. BD argued that this rendered the proceedings «unfair», and that the right to be heard was violated.

The Supreme Court did not buy into that. BD did not request recusal of the President, but rather only criticised the President’s conduct of the proceedings without a clear indication of the actual disadvantage that it suffered therefrom. The Supreme Court notes that the right to be heard is no end in itself (with reference to 4A_166/2021).

Expenses for patent attorney not refundable

Respondent tried to retrieve its expenses for the assistance of a patent attorney at the appeal stage. To no avail. The Supreme Court held that such expenses are included in the tariff, with reference to BGE 147 III 337, ¶8.

/MW

BIBLIOGRAPHY

Case No. 4A_500/2021 (Supreme Court) | Judgment of 31 January 2022 on appeal against O2020_001 (FPC) | Judgment of 9 June 2021

Becton, Dickinson and Company (Appellant / Plaintiff)
./.
Ypsomed AG (Respondent / Defendant)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Appellant / Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)

Representative(s) of Respondent / Defendant:

JUDGMENT OF THE SUPREME COURT
→ appeal against FPC decision dismissed
Case no.: 4A_500/2021
Judgment of: 31 January 2022

JUDGMENT OF THE FPC
→ complaint dismissed / patent invalid for added matter
Case no.: O2020_001
Judgment of: 9 June 2021

PATENT IN SUIT

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Delica and JDE litigating over aluminum coffee capsules

Reading time: 4 minutes

Case No. O2020_002 | Judgment of 21 December 2021

DISCLOSURE NOTICE: Hepp Wenger Ryffel was involved in this matter on behalf of Delica AG.
Delica logo

The plaintiff Delica had initiated nullity proceedings against Douwe Egbert’s CH 711 079 B1 on 2 June 2020; see Swissreg for bibliographic details.

CH 079 is part of a complex patent family. Corresponding to CH 079, the patent family comprises DE 20 2016 106 171 U1 (see the DPMA Register and file wrapper for further information), i.e. a utility model that was split off from a patent application (DE 10 2016 006 034 A1) which itself has meanwhile been been rejected in 2018 (cf. DPMA Register / file wrapper).

It is noted in ¶16 of the judgment that Douwe Egberts had initiated infringement proceedings 21 O 12764/19 in Munich, which are currently stayed in view of the cancellation proceedings; cf. order of 5 August 2020.

Coffee capsule

Claim 1 of CH 079 is pretty lengthy. In a nutshell, it’s about a coffee capsule with an aluminum capsule body and an aluminum cover, wherein the dispute was mainly about a specific arrangement of a sealing element in the flange of the capsule. Further independent claims pertain to a corresponding system and use of said capsule.

DE logo

About half of the judgment is dealing with the procedural history and a recitation of the various requests for maintenance of CH 079 in limited form; DE did not defend CH 079 as granted anymore. Yet further 12 pages of the judgment are spent on claim construction. The latter paved the way for a straight-forward assessment of patentability on the merits: The judgment holds that the subject-matter of all requests on file is anticipated by WO 2014 / 184 652 A1. Accordingly, CH 079 has been revoked and the further novelty attacks based on WO 2014 / 184 653 A1, WO 2014 / 198 474 A1, WO 2014 / 184 651 A1, EP 1 700 548 A1 and WO 2013 / 120 997 A1 did not need to be addressed.

The judgment is not yet final / can still be appealed to the Supreme Court.

UPDATE 28 July 2022: JDE’s appeal has been dismissed by the Supreme Court, with decision 4A_41/2022 of 24 May 2022.

/MW

BIBLIOGRAPHY

Case No. O2020_002 | Judgment of 21 December 2021

Delica AG
./.
Koninklijke Douwe Egberts B.V.

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • André WERNER
    • Kurt STOCKER

Judge-rapporteur:

    • André WERNER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Andrea MONDINI (TIMES)
    • Dr. Theodore CHOI (SBMP), assisting in patent matters
    • Christoph FRAEFEL (SBMP), assisting in patent matters

DECISION IN FULL

PATENT IN SUIT

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‘Oh, just one more thing’

Reading time: 4 minutes

Case No. 4A_562/2021 (Supreme Court) | Judgment of 1 December 2021 on appeal against O2020_014 | Procedural decision of 22 October 2021

This judgment of the Supreme Court refers to an unpublished procedural decision of the FPC of 22 October 2021 in case no. O2020_014. Nothing has surfaced about this case so far, except for this judgment.

The case started as a ‘normal’ patent infringement case at the FPC, with one patent in suit and six requests. Only after the instruction hearing and with plaintiff’s reply in the second round of briefs, a second patent was invoked. And the number of requests increased to 54. Two of these requests (50 and 51) seek a declaration of infringement of the newly invoked patent, subsidiarily to the requests relating to the first patent.

The FPC had held in a procedural decision that this amounts to an amendment to the statement of claim according to Art. 227 CPC, and that this amendment is admissible in view of the factual connection between the initial and the amended claim; Art. 227(1) lit. a. Accordingly, the defendants were ordered to provide the rejoinder also with respect to the requests 50 and 51.

The late assertion of the second patent has various implications. First, defendants do not have the possibility to lodge a formal counter-claim for invalidity; this is only possible with the statement of defense (Art. 224 CPC) — which had already been provided.

Secondly, defendants are deprived of an instruction hearing with respect to the second patent, and they do not have the chance to argue twice in writing, without limitations, on the second patent: After the rejoinder, there is only an unconditional right to reply to new assertions.

The presiding judge did not buy into that. In particular the second line of arguments could well be dealt with in an appeal against the final decision, if defendants would not prevail on the merits before the FPC.

Accordingly, the judgment holds that the appeal was obviously inadmissible (‘offensichtlich unzulässig’), and the appeal was thus not even considered.

Boom. That’s a harsh decision, in my perception. I sincerely hope that this example does not set a precedent for tactical gamesmanship in proceedings before the FPC, in the sense that yet further patent(s) are only invoked with the reply, after the instruction hearing and when the waters have been tested with a first patent.

Oh, just one more thing … here’s yet another patent that’s infringed!

It will be interesting to see how the case finally unfolds. I have a vague feeling that it might be about … 😉

Reported by Martin WILMING

Header image: Courtesy of Wikimedia Commons / CC BY-SA 3.0

BIBLIOGRAPHY

Case No. 4A_562/2021 (Supreme Court) | Judgment of 1 December 2021 on appeal against O2020_014 | Procedural decision of 22 October 2021

Aa___ Inc.
Ab___ Ltd.
Ac___ GmbH
(Defendants / Appellants)
./.
B___ AG (Plaintiff / Respondent)

Single Judge:

    • Dr. Christina KISS

Court Clerk:

    • Dr. Thomas WIDMER

Representative(s) of Appellants / Defendants:

Representative(s) of Plaintiff / Respondent:

    • Adriel CARO (Caro)

JUDGMENT OF THE SUPREME COURT
→ Appeal against procedural decision of the FPC of 22 October 2021 not considered
Case no.: 4A_562/2021
Judgment of: 1 December 2021

PROCEDURAL DECISION OF THE FPC
→ Change of the complaint admitted, incl. requests for injunctive relief based on second patent only asserted with plaintiff’s reply
Case no.: O2020_014
Procedural decision of: 22 October 2021

[unpublished]

PATENTS IN SUIT

n/a

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Does the Supreme Court assess the skilled person’s understanding of a piece of prior art?

Reading time: 6 minutes

Case No. 4A_149/2021 (Supreme Court) | Judgment of 24 June 2021 on appeal against O2018_008 (Patent Court) | Judgment of 2 February 2021 to revoke EP(CH) 1 379 220 H1

Tiotropium bromide

Glenmark had challenged the validity of Boehringer Ingelheim’s EP(CH) 1 379 220 H1, which is the Swiss part of EP 1 379 220 B1 after a partial waiver. The patent is about tiotropium capsules for inhalation and relates to BI’s Spiriva® Handihaler® for the management of chronic obstructive pulmonary disease (COPD).

With the partial waiver, BI split the independent claim into two alternatives (amendments marked-up in bold; only available in German, for the time being); see the claims in mark-up below:

Claim 1 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass als Kapselmaterial Gelatine im Gemisch mit dem Zusatz Polyethylenglycol (PEG) in einem Anteil von 1–10 Gew-%, bevorzugt 3–8 %, verwendet wird und dass das Kapselmaterial einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 10% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.

Claim 3 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass das Kapselmaterial Hydroxypropylmethylcellulose ist und einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 5% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.

We have reported about the FPC’s decision on this Blog here. In a nutshell, the FPC had held that the subject-matter of claim 1 (gelatine with PEG as capsule material) was obvious over Maessen et al. in further view of JP 502 (JP 2000-143502, available as machine translation). Essentially the same reasoning applied to the subject-matter of claim 3 (HPMC as capsule material; the FPC had held that claim 3 was obvious over Maessen et al. and Ogura et al. (or vice versa).

And the Supreme court?

Only the finding of obviousness of claim 3 (HPMC capsule material) was challenged by BI in the appeal proceedings. BI’s arguments essenitally hinged on the formulation of the ‘objective technical problem’ in the problem-solution approach of the FPC; ¶ 5. The FPC had held that it was only the provision of an alternative (which in by far the most cases results in a finding of obviousness), while BI argued that it should be an improvement over the prior art; ¶ 5.1 (i.e. the improved physical stability of the encapsulated active agent, and thereby improved inhalability.)

The Supreme Court did not buy into that and held (with reference to the case law of the Boards of Appeal of the EPO) that a specific technical effect can only be considered in the formulation of the ‘objective technical problem’ (and supported by subsequent experimental evidence) when it is at least foreshadowed in the application as filed:

See Case Law of the Boards of Appeal, I.D.4.2.2 for further information; in particular, see e.g. T 321/16, ¶ 1.3.1, in German («[…] wenn diese Wirkung in den ursprünglich eingereichten Unterlagen nicht wenigstens angedeutet wird.»), with reference to T 344/89, ¶ 5.3.1, in English language («[…] if the new problem were foreshadowed in the originally filed application.»).

The Supreme Court noted that BI failed to establish in first instance proceedings that there was any effect foreshadowed in the application as filed that would go beyond the provision of a mere alternative to gelatine, as exemplified e.g. by Maessen et al.

Stepping back, I feel that this is not out of the ordinary. The patent as granted outlines the invention as to provide a capsule material with a reduced moisture content of less than 15% (¶ [0008] and claim 1), and mentions as the (subjective) technical problem to achieve a sufficient stability of the active agent (¶ [0006]). Notably, irrespective of the actual capsule material — and even though some preferred upper limits below 15% are mentioned, the patent is silent about why they are preferred. What is more, both gelatine and HPMC are actually described exchangeably in the specification; no indication whatsoever that there was any advantage of HPMC over gelatine. (The outcome might well have been different if the patent had indicated any preference of HPMC over gelatine, maybe.)

Further, the FPC had held that Voigt/Fahr was sufficient evidence of the skilled person’s knowledge that a more dry capsule material was preferred; and that Zeng et al. had been appropriately considered by the FPC (even though not expressly mentioned again in the context of claim 3, but rather only in the assessment of claim 1).

Does the Supreme Court assess the skilled person’s understanding of prior art documents?

There is one paragraph in the Supreme Court’s judgment that might suggest otherwise:

The Supreme Court held, losely translated, that it assesses violations of Federal Law, and that it does not assess the skilled person’s technical understanding of prior art documents. This paragraph already gave rise to a critical comment on Kluwer Patent Blog and Lexology.

I don’t see much of an issue here. In my reading in context, it appears that the Appellant had argued in appeal proceedings that Ogura et al. only pertained to the moisture content of empty capsules. The Supreme Court refers to this argument as an interpretation which had not been at stake in the underlying decision of the FPC — and which Respondent disputed.

With this in mind, I feel what the Supreme Court meant to say when it later again refered to an interpretation of a prior art document is that it does not assess the skilled person’s technical understanding of such a document from scratch again on appeal, when a new interpretation is brought forward only in the appeal stage. But there may well be situations where the FPC’s finding of the skilled person’s understanding of a certain piece of prior art could be reviewed by the Supreme Court, e.g. when the finding is just arbitrary.

BI’s appeal was dismissed; EP(CH) 1 379 220 H1 is finally revoked.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_149/2021 (Supreme Court) | Judgment of 24 June 2021 on appeal against O2018_008 (Patent Court) | Judgment of 2 February 2021 to revoke EP(CH) 1 379 220 H1

Glenmark Pharmaceuticals Europe Ltd
(Appellant / Defendant)
./.
Boehringer Ingelheim Pharma GmbH & Co. KG
(Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Dr. Matthias LEEMANN

Representative(s) of Appellant / Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)

Representative(s) of Respondent / Plaintiff:

SUPREME COURT DECISION

PATENT COURT DECISION

PATENT IN SUIT

EP 1 379 220 B1 (as granted):

EP(CH) 1 379 220 H1 (after partial waiver):

Claims after partial waiver, mark-up:

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Infringement proceedings re injector pens derailed, Supreme Court holds that appearence of bias has to be re-assessed

Reading time: 18 minutes

Case No. 4A_243/2020 (Supreme Court) | Decision of 5 November 2020 on appeal against O2017_022 | Order of 8 April 2020 (unpublished)

The defendant / respondent in this matter had been sued for infringement of three patents by certain injector pens back in November 2017 at the FPC. The case number is O2017_022; nothing has surfaced about this case by now. The panel of judges is Dr. Christoph Gasser (presiding judge), Dr. Tobias Bremi (judge-rapporteur) and Dr. Kurt Sutter. Judge Bremi’s expert opinion was sent to the parties for comment on 7 January 2020. In the expert opinion, judge Bremi inter alia held that one of the three patents was valid and infringed. 

Less than a week later, on 13 January 2020, yet another party sued the very same defendant for infringement of its patent by the very same injector pens which are at stake in O2017_022. This second case is referred to as O2020_001. From the details reveiled in the Supreme Court decision, it is clear that the plaintiff in the second proceedings is represented by MLL.

Nothing out of the ordinary this far. But the defendant then requested that judge-rapporteur Bremi recuse himself from the first proceedings O2017_022. The defendant argued that judge Bremi’s employer, the patent attorney firm I&P of which he is a partner, was registered as the representative of patents of the plaintiff in the second proceedings O2020_001 before the Swiss IPI, including the patent-in-suit in that case. The second action O2020_001 was directed against the same injector pens of the defendant as in O2017_022, which was why the outcome in O2017_022 had considerable prejudicial significance for O2020_001.

You cannot make this up. Here is the factual setup again, in short:

Factual setup

With decision of 8 April 2020, the Administrative Commission (AC) of the FPC dismissed the request for recusal. In sum, the AC held that a part-time judge who is an employee of a firm that only performs administrative support tasks for a third party who brings an action on a different legal basis against the defendant cannot objectively give rise to any mistrust in the impartiality of the part-time judge in proceedings in which the employee is acting as a part-time judge.

The Supreme Court did not agree. At least not for now, and not so easy. Rather, it depends. But the facts have not (yet) been sufficiently established by the FPC’s AC for the Supreme Court to decide.

But first things first. Let’s have a closer look at some of the extensive case law that is referred to by the Supreme Court about cases in which a part-time judge (or arbitrator) was particularly connected to a litigant because of his activity in a law firm. If you are only interested in the case-specific issues, feel free to jump here.

Case law review

In general terms, the Supreme Court held that the guarantee of a constitutional judge applies equally to full-time and part-time judges. The fact that the use of part-time judges increases the likelihood of professional relations with one of the parties to the proceedings compared to full-time judges who do not pursue any other gainful activity does not justify a less stringent application of the constitutional requirements (139 III 433, ¶ 2.1.3).

In the interest of the credibility of the FPC with only two full-time judges and a vast majority of part-time judges particular attention must be paid to judicial independence. Still, the legislator deliberately set up a specialised court for patent law and staffed it with specialised judges whose main profession is also related to patent law. The Supreme Court held that this must also be taken into account.

According to settled case law of the Supreme Court, a lawyer acting as a judge appears to be biased if there is an outstanding mandate with a party or if he has acted as a lawyer for a party several times in the sense that there is a kind of permanent relationship between them. This applies irrespective of whether the mandate has a factual connection with the subject matter of the dispute or not (140 III 221, ¶ 4.3.1; 139 III 433, ¶ 2.1.4; 138 I 406, ¶ 5.3; 135 I 14, ¶ 4.1). In such a situation, the lawyer acting as judge may be tempted, even if unconsciously, not to want to alienate his client by making a decision that is unfavourable to him (135 I 14, ¶ 4.3).

Furthermore, the Supreme Court repeatedly held that a lawyer acting as judge or arbitrator does not only appear to be biased if he represents or has represented one of the litigants in another proceeding shortly before, but also if such a representation relationship exists or has existed with the opposing party of one of the litigants in the other proceeding (139 III 433 , ¶ 2.1.4;  138 I 406, ¶ 5.3; 135 I 14, ¶4.1-4.3; 139 I 121, ¶ 5.1; 139 III 120, ¶ 3.2.1). There is an appearance of bias insofar as the litigant could objectively fear that the judge might not want to rule in his favour because he was acting for the opposing party of his client in the other proceedings. A litigant often transfers his or her negative feelings towards the opposing party to the latter’s legal representative, as the latter supports the opposing party in the dispute. For many parties, the lawyer of the opposing party is considered as much an adversary as the opposing party itself, all the more so as he is perceived as the actual strategist. It is therefore understandable that a party does not expect a judge who is fighting against it in other proceedings as a representative of the opposing party and who — from its point of view — will possibly deprive it of its rights or has deprived it of its rights, to suddenly face it with complete impartiality (138 I 406, ¶ 5.3; 135 I 14, ¶ 4.3). This applied irrespective of whether or not the lawyer’s mandate had a factual connection with the subject matter of the dispute (138 I 406, ¶ 5.4.1). In such cases, the Supreme Court regularly assumes a prima facie case of bias irrespective of the further concrete circumstances (139 III 433, ¶ 2.1.4; 138 I 406, ¶ 5.4.1). In particular, in the case of an ongoing relationship with a party to the proceedings, it cannot matter whether the mandate exercised is considered important or less important by the party or the lawyer (139 III 433, ¶ 2.1.4).

Further, the Supreme Court had held that an appearance of bias also arises from the fact that it is not the part-time judge himself, but another lawyer in his firm who has a mandate with a litigant or who has had such a mandate several times before or in the sense of a permanent relationship. The client expects loyalty not only from his contact person within the law firm, but from the entire firm. The uniform approach is also in line with the law governing the legal profession, which treats all lawyers in a law firm as one lawyer with regard to a conflict of interest (140 III 221, ¶ 4.3.2; 139 III 433, ¶ 2.1.5).

The Supreme Court has also held that it is inadmissible for a lawyer to participate as a judge in a case that may have significant prejudicial significance for a similar proceeding in which he is representing a third party as a lawyer (139 III 433, ¶ 2.1.6). Thus, there would be a prima facie case of bias if a part-time judge was appointed to rule in a case in which the same legal questions arose as in another pending case in which he or she was acting as counsel (128 V 82, ¶¶ 2a and 3d; 124 I 121, ¶ 3). With reference to these two decisions, the Federal Supreme Court later considered that the question of recusal could arise if a judge represented a third party in parallel proceedings who pursued the same interests as one of the parties to the proceedings. This was to avoid the judge deciding on a dispute in a way that could improve his or her position as a lawyer in the parallel proceedings (133 I 1, ¶ 6.4.3).

Even purely administrative activities of a lawyer acting as a part-time judge or of his law firm are not per se unobjectionable. But not every relationship of any kind of an economic, professional or personal nature in itself gives rise to the appearance of bias (125 II 541, ¶ 4b). For such a relationship to give rise to concerns of bias, objective circumstances must indicate a certain intensity of the relationship (9C_257/2016, ¶ 4.2.1; 8C_467/2014, ¶ 4; 4A_256/2010 ¶ 2.4). Whether a relationship reaches this degree of intensity is assessed on the basis of the specific circumstances of the individual case. See, for example, 4A_256/2010 ¶ 2.5 regarding a patent application. If the objected relationship is not with a party to the proceedings but with its opposing party or a third party in another proceeding, the effect of the two proceedings on each other must also be taken into account when deciding on the recusal.

The case at hand

In its internal Guidelines on Independence, the FPC does not equate purely administrative activities and the provision of an address for service with (patent) attorney activities. However, the FPC also does not assume that such activities are unproblematic with regard to the appearance of bias in every case. According to Art. 4 lit. f of the Guidelines, a judge shall recuse if he (or the company for which he works) is or was acting as addressee for service of the patent-in-suit. According to Art. 4 lit. g, the judge shall also recuse if he (or his company) is or has been directly mandated by the party to the dispute as addressee for service and to maintain the validity of its IP rights within the year or on a regular basis.

Accordingly, judge Bremi may not participate as a judge in the second case O2020_001 due to the administrative relationship of I&P with the plaintiff in the second case. The Supreme Court holds that on the other hand, according to the Guidelines, there is no bias («besteht keine Befangenheit») on the part of judge Bremi for the first patent infringement case, as his law firm was not mandated by a «party to the dispute directly» as an addressee for service and to maintain its IP rights. The firm was rather mandated by a third party, namely the plaintiff in the second case O2020_001, which is not a party to the first case O2017_022.

I respectfully disagree with the Supreme Court in this respect. Art. 4 of the Guidelines is an open list of grounds for recusal («insbesondere»). Accordingly, it cannot be said that the Guidelines hold that there is no bias in the situation at hand. Anyway, the Supreme Court rightly emphasises that the Guidelines can help judges to better assess their potential bias in the specific case. But what ultimatley counts is the law itself (139 III 433, ¶ 2.2). In particular, the Guidelines must not lead to the conclusion that a judge can in no way be biased by administrative work, apart from the specific situations governed by Art. 4 lit. f and g. Whether a reason for recusal exists has to be assessed according to Art. 47 CPC (to which the Guidelines refer to in the general clause of Art. 3), taking into account the principles flowing from Art. 30(1) FC (to which the Guidelines do not explicitly refer to), according to the specific circumstances of the individual case. Accordingly, even in the case of purely administrative activities, a concrete and case-specific assessment must be carried out to determine whether there is an appearance of bias.

Now, does the relationship between I&P and the plaintiff in the second patent infringement proceedings reach such an intensity under the specific circumstances for judge Bremi to appear to be biased in the first patent infringement proceeding?

To answer this question, the Supreme Court held that two aspects need to looked at more closely:

    1. The extent of the relationship between I&P and the plaintiff in the second proceedings; and
    2. the effect of the outcome of the first proceedings on the second proceedings.

As to the first aspect, i.e. the relationship between I&P and the plaintiff in the second proceedings, the contested decision of the FPC’s AC only stated that I&P’s activities were limited to purely administrative representation at the IPI. The appellant argued that it is not clear from the contested decision how the FPC could even know this. Indeed, the Supreme Court held that the FPC merely stated that I&P’s activities for the plaintiff in the second proceedings were limited to purely administrative representation. But there was no evidence for this statement, which the appellant rightly complains about. It was not baseless from the outset when the appeallant argued that in a business relationship lasting more than 15 years, it cannot be assumed without further clarification that I&P does not represent any interests of that party other than receiving mail from the IPI. Accordingly, the Supreme Court held that the FPC’s AC should have clarified the nature, scope and duration of the specific business relationship between I&P and the plaintiff in the second proceedings and, in particular, the FPC should have verified whether I&P did not provide the plaintiff in the second proceedings with more extensive (patent) legal advice, as the appellant suspects.

As to the second aspect, i.e. the effect of the first proceedings on the second one, the FPC only stated that in the second proceedings an unnamed third party asserts infringement of a not specifically identified patent by the same injector pens of the appellant. Further details are missing; not even the name of the plaintiff in the second proceedings is known (what a pity, indeed). Further, it is not known whether the two actions are directed against the same embodiment of the (type of) injector pen. Nor is it known whether the plaintiff in the second action is a competitor of the appellant who could benefit from the first action being upheld.

The Supreme Court acknowledged that due to the different patents-in-suit, the second proceedings against the appellant presumably raise different technical and legal questions than the first proceedings. Still, there may be delicate interferences. For instance, according to the appellant’s submissions, which have yet to be established in evidence by the FPC, the plaintiff in the second proceedings could pursue the same interests as the plaintiff respondent in the first proceedings, namely a ban on the manufacture and distribution of the attacked injector pens. Accordingly, such a ban in the first proceedings would also serve the plaintiff in the second proceedings. Further, the Supreme Court did note that, if the respondent’s action were to be upheld, the appellant could well come up with a workaround that lies outside the scope of protection of the patents asserted in proceedings O2017_022. However the Supreme Court held that, as the appellant rightly argued, it is generally known that medical products cannot be adapted and brought to market overnight, but are regulated products, so that the plaintiff in the second proceedings may well have an interest in the respondent’s complaint to succeed.

In this factual situation, the FPC’s AC should have clarified the concrete effects of the two pending patent infringement proceedings for the question of judge Bremi’s recusal in the first proceedings. Based solely on the factual elements established in the contested decision, it was not possible for the Supreme Court to conclusively examine the concrete effects of the first proceedings O2017_022 on the second proceedings O2020_001. The FPC’s AC has thus not established all the relevant facts, which prevented the Supreme Court from correctly applying the rules on recusal.

A contingent reasoning of the FPC’s Administrative Commission did not convince the Supreme Court, either. The FPC had concluded that even if one were to assume that the facts of the case objectively gave rise to the appearance of bias, the appellant could not invoke it in view of a violation of the requirement to act in good faith in the proceedings (Art. 52 CPC), because the appellant had created the ground for recusal itself with the request for recusal and the facts and arguments contained therein. In the FPC’s view, as judge Bremi was not involved in the second proceedings O2020_001, he had not been aware of anything from these proceedings apart from the names of the parties involved. His employer I&P was not involved in the second proceedings. In particular, judge Bremi had not been aware until the appellant’s request for recusal that the second proceedings were directed against the same injector pens as in O2017_022. The FPC had held that it was against the requirement of acting in good faith to provide a judge with the very knowledge that allegedly made him appear biased: If the appellant had not filed a request to recuse herself, no appearance of bias could have arisen because judge Bremi would simply not have known that his employer (allegedly) had an interest in him ruling against the complainant in proceedings O2017_022. The complainant could therefore not invoke the ground for recusal even if it existed.

The Supreme Court held that this line of reasoning is mistaken. Since it is not important for the appearance of bias of a judge whether he is actually biased, it cannot be decisive for the assessment of the reason for recusal whether the judge had already been aware at the time of filing the request for recusal request whether a certain reason for recusal existed, or whether a party first made him aware of such a reason. The Supreme Court notes that, ultimately, the FPC’s contingent reasoning would mean that wherever a judge is not (yet) aware of an existing ground for recusal, no request for recusal could be made because the party would otherwise be violating the good faith principle by making the judge aware of the ground for recusal. This would contravene the very essence of the rules on recusal.

Accordingly, the FPC’s contingent reasoning did not hold, either.

In sum, the Federal Supreme Court could not finally assess whether judge Bremi is biased in the first patent infringement proceedings O2017_022 because the facts have not yet been sufficiently established. The case has accordingly been remitted to the FPC to completely establish the facts and to render a new decision.

Full stop!

That’s a harsh stop to O2017_022 at a very late stage of the proceedings, well after the expert opinion of judge-rapporteur Bremi had been established and most likely only shortly before the main hearing. It will be interesting to see how the FPC deals with the remittal. In particular, I wonder how to properly and openly assess the potential cross-contamination between the two proceedings, while at the same time not to disclose otherwise non-public information of both plaintiffs to each other. They are most likely competitors, and would not normally know about particulars of the respective other proceedings.

Now, who are the parties?

I feel ashamed but I do not feel confident enough (yet) to come up with an educated guess here. But, clearly, there is only a limited number of high-stake companies that could be involved:

Injector pen key market players (see here)

Any one of these companies being sued by two others for infringement of their respective patent(s) by one and the same injector pen will be an interesting setup from a market perspective. We shall see.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_243/2020 (Supreme Court) | Decision of 5 November 2020 on appeal against O2017_022 | Order of 8 April 2020 (unpublished)

n/a (Appellant / Defendant)
./.
n/a (Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANELLAS

Court Clerk:

    • Daniel BRUGGER

Representative(s) of Respondent / Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Dr. Roman BAECHLER (Homburger)

Representative(s) of Appellant / Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)

SUPREME COURT DECISION
Appeal against the order of the FPC’s Administrative Commission of 8 April 2020 (unpublished) in case O2017_022, rejecting the request for recusal of judge-rapporteuer Tobias Bremi
Case no.: 4A_243/2020
Decision of: 5 November 2020

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A partial waiver that did not do the trick

Reading time: 8 minutes

Case No. 4A_583/2019 (Supreme Court) | Decision of 19 August 2020 on appeal against O2016_012 (FPC) | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

I have reported about the first instance decision in this matter on this Blog here. It was a controversially discussed decision — not only by practitioners after publication, but already in the making: It was a split decision, with a dissenting opinion supported by two of the five judges.

A quick recap
Implantec’s logo

The patent in suit is EP 1 411 869 B1; see Swissreg and EPO Register for further information. Stemcup asserted that Implantec‘s ANA.NOVA® hybrid socket infringes the patent.

Stemcup’s logo

Stemcup had partially waived EP 869 at the IPI, to overcome the judge-rapporteur’s finding in his expert opinion with respect to a presumably undue extension of subject-matter. The partial waiver had thus been filed at a very late stage of the proceedings, i.e. only after formal closure of the file and only about nine months after the defendant’s rejoinder wherein the undue extension of subject-matter had first been asserted.

The partial waiver has been published on 15 August 2018. Independent claims 1 and 2 now read as follows (inofficially translated; changes marked-up):


Claim 1

A joint prosthesis (1) with a base body (10) for knocking into a bone, characterised in that there are arranged at least two locking elements (20) on the outer side of the base body (10) which in each case comprise at least one knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

Claim 2

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

On the merits, this was no big deal. The FPC had emphasized that the patent after the partial waiver fits smoothly into the subject-matter as it had been already discussed in the proceedings, and the parties’ right to be heard had well been observed.

The FPC had further held that the plaintiff made use of a possibility that is explicitly provided for in Art. 24 PatA, and that this partial waiver is effective ex tunc, i.e. the patent is treated as if it had been granted only to that extent right from the outset. This is a new fact within the meaning of Art. 229(1) lit. a CPC (proper novum), because the patent in that limited form was only created after the formal closure of the file. The FPC had held that the fact that the plaintiff could have requested the partial waiver with the IPI well before the closure of the file, or that the partial waiver represents a new fact created by the plaintiff himself, does not change anything in this respect.

Further, the FPC had held that the proceedings have not become devoid of purpose, as the defendants had argued; this would only be the case if no patent existed at all anymore. 

And now … forget all of that!

The Supreme Court disagreed, entirely.

A strictly literal interpretation of Art. 229(1) CPC does not sufficiently take account of the fact that all party submissions must be made within a certain stage of the proceedings, i.e. one must not conveniently hold back facts and only submit them later (‘Eventualmaxime’). There are two aspects to that: On the one hand, facts must be presented in a concentrated manner; and on the other hand they can — in the interest of material truth — still be submitted later, under certain circumstances. The Supreme Court holds that it would contradict the first aspect if facts that are subsequently created by a party, which — depending on the decision of this party — could have already existed before the closure of the file, would qualify as proper nova. Further, it is not that the second aspect would require that the belated fact be taken into account.

The admissibility of new facts, the creation of which depend on the will of a party, is thus governed by Art. 229(1) lit. b CPC, i.e. it has to be shown that they could not have been submitted earlier, despite reasonable diligence.

This is essentially as has been argued in O2017_014 (see this Blog here), with reference to the decision ES 2018 449 of the Cantonal Court Zug.

In the case at hand now, the undue extension of subject-matter had first been alleged by the defendant already with the rejoinder. The Supreme Court holds that this should have prompted the plaintiff / patentee to fix it. Reacting only after receipt of the judge-rapporteur’s expert opinion was belated.

Finally, the Supreme Court holds that the patentee has no legal interest in a judgment on the patent as initially granted, since it does not exist anymore after the partial waiver. Note that the legal interest has to be examined ex officio. On the other hand, the partially waived patent cannot be admitted into the proceedings, as outlined above. Acordingly, the case has to be dismissed as devoid of purpose.

Thus, the Supreme Court lifted the FPC’s decision and dismissed the case as devoid of purpose. The case has been remitted to the FPC, to decide on the costs.

Now we know … what we don’t know

It is perfectly clear now that a partial waiver after closure of the file, to react on the judge-rapporteur’s expert opinion, does not generally do the trick. At least not in those cases where one could — and should — have reacted earlier. It won’t work anymore for a patentee to just wait and see whether the judge-rapporteur follows a nullity argument, and to only react with a partial waiver when needed in view of the expert opinion.

But what if the judge-rapporteur comes up with a certain reasoning in respect of an issue that is to be examined ex officio (e.g. a clarity issue in an amended claim in nullity proceedings), without it having been pleaded by the other party? Perhaps, one might still argue that one could not have submitted the partial waiver earlier, despite reasonable diligence in such cases?

Further, I wonder what happens when a plaintiff failed with his complaint for some validity issues, he then partially waives the patent later-on and sues the same defendant for the same attacked embodiment again. It’s not the same patent anymore, in my reading of the present decision. Thus, it is not yet res iudicata(?).

Patent litigation will surely remain exciting.

Oh, and I feel that the present decision might have a huge impact on some pending cases. For instance, the plaintiff / patentee in O2018_004 has partially waived the patent after receipt of the judge-rapporteur’s expert opinion. The main hearing is scheduled for 3 September 2020; see this Blog here. Maybe, we will see some creative lawyering as to why this partial waiver could not have been made earlier, despite reasonable diligence.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_583/2019 (Supreme Court) | Decision of 19 August 2020 on appeal against O2016_012 (FPC) | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

(1) Implantec GmbH Appellants / Defendants
(2) Endoprothetik Schweiz GmbH
(formerly ImplanTec Schweiz GmbH)
./.
Stemcup Medical Products AG Respondent  / Plaintiff

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellants / Defendants:

    • Dr. Michael RITSCHER (MLL)
    • Noëlle STALDER (MLL)

Representative(s) of Respondent / Plaintiff :

SUPREME COURT DECISION

FPC DECISION

PATENT IN SUIT

EP 1 411 869 B1 (as initially granted):

 

EP(CH) 1 411 869 H1 (after partial waiver):

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There is an end to everything, even a flow sensor

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Case No. 4A_77/2020 (Supreme Court) | Decision of 17 June 2020 » on appeal against O2019_008 (FPC) | Decision of 17 December 2019 » | ‘Flow sensor II’

This is the second time that the Supreme Court had to deal with the ‘flow sensor’ litigation between Hamilton Medical and imtmedical. We had reported already on this Blog about the main hearing of 29 October 2018, the first decision of the FPC (case O2016_009 of 18 December 2018) and the first Supreme Court decision (case 4A_70/2019 of 6 August 2019). The latter decision has apparently been acknowledged «Impact Case of the Year 2020 – Switzerland» at the MIP Awards in March 2020. The Supreme Court had remitted the case to the FPC, to assess one specific issue; see 4A_70/2019, ¶2.5.4:

... for which the Supreme Court had remitted the case back to the FPC.

Inofficially translated:

[The FPC] did not examine whether there was a causal connection between the improper novum [document E10] in the rejoinder and the verbal limitation of the patent claim, i.e. whether the limitation was specifically occasioned by [E10]. The case must thus be remitted to [the FPC] for assessment of this issue.

Well, in the second FPC decision it had been held that the limitation was indeed specifically occasioned by E10; see this Blog here. imtmedical appealed again, but the Supreme Court has dismissed the appeal with decision of 17 June 2020.

A procedural issue is probably the most interesting aspect of the Supreme Court decision: As long as there is still a deadline pending for a party to make a submission on the merits, no separate (immediate) submission on a novum is necessary in the meantime.

As long as there is still a deadline pending for a submission on the merits, no separate reaction on the novum is necessary beforehand.

On the merits, the Supreme Court strictly focused to the only issue that had still been at stake — and did not actually address imtmedical’s arguments on various other issues (which the Supreme Court evidently did not appreciate).

Now that the partial decision on infringement and injunctive relief is final, it remains to be seen how this litigation continues when imtmedical has provided the information and accounting, as ordered.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_77/2020 (Supreme Court) | Decision of 17 June 2020 » on appeal against O2019_008 (FPC) | Decision of 17 December 2019 » | ‘Flow sensor II’

Hamilton Medical AG (Respondent / Plaintiff)
./.
imtmedical AG (Appellant / Defendant)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Martha NIQUILLE
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellant / Defendant:

Representative(s) of Respondent / Plaintiff:

2nd SUPREME COURT DECISION 

on appeal against O2019_008 | Decision of 17 December 2019:
4A_77/2020 17 June 2019

2nd FPC DECISION

on remittal of 4A_70/2019 | Decision of 6 August 2019:
O2019_008 17 December 2019

1st SUPREME COURT DECISION 

on appeal against O2016_009 | Decision of 18 December 2018:
4A_70/2019 6 August 2019

1st FPC DECISION 

O2016_009 18 December 2018

CH 701 755 B1


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Supreme Court endorses Comvik approach

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Case No. 4A_609/2019 (Supreme Court) | Decision of 16 July 2020 » on appeal against O2017_007 (FPC) | Decision of 1 November 2019 »

In first instance proceedings, the FPC held that some of imtmedical’s Bellavista ventilation machines with the ‘Animated Lung‘ feature infringe on Hamilton Medical’s EP 1 984 805 B1 »; see EPO Register and Swissreg for further bibliographic information. See this Blog here for a detailed review of the first instance decision.

The Supreme Court has dismissed imtmedical’s appeal, with decision of 16 July 2020.

As a quick reminder, the independent claim reads as follows:


Claim 1, broken down into features

The decisive features re novelty and inventive step are highlighted.

1A A device with a screen
1B in order on this to represent acquired, changing values with a mechanical ventilation of a patient,
1C with means for acquiring at least three changing values of different origin,
1D [a] and means for representing the values,
[b] which permit the acquired values to be qualitatively represented together on the screen
[c] in a single element
1E [a] said graphical element including
[b] a pictorial representation of a lung shape,
[c] a current design of the lung shape containing qualitative information on the compliance of the lung,
characterized in that
1F [a] the means for representing [the] values are designed such
[b] that a volume change of the ventilated lung which is acquired with each breath, is represented in an animated manner
[c] by way of a size change of the lung shape corresponding to this volume change,
[d] involving an animation of a contour line of the lung shape,
[e] the design of which containing qualitative information on the compliance of the lung.


Welcome to Switzerland, COMVIK(?)

Technicality as such was undoubtedly given; Art. 52 EPC. The Supreme Court endorses the EPO’s approach that the mere presence of at least one technical feature is sufficient. Anything else is to be dealt with under Art. 56 EPC in the case of mixed inventions, i.e. claims comprising technical and non-technical features.

As mentioned earlier, the IPI applies a different test. In my humble opinion, there is no room anymore for the IPI’s ‘holistic’ approach (‘Ganzheitsbetrachtung’) in the assessment of technicality of the claimed subject-matter: The FPC has explicitly committed to apply the EPO’s approach ( T 641/00 (Two identities / COMVIK)) not only for European patents but also for Swiss patents; and the Supreme Court applied the COMVIK approach without any hesitation at all. I cannot see how there could reasonably be two different approaches in place to assess one and the same issue, just depending on whether it is assessed during prosecution or in litigation.

imtmedical had argued that i) there was no improved assistance of a user of a ventilation machine; and ii) there was no plausible contribution to a solution of a technical problem at all.

However, the Supreme Court clearly holds that providing a (non-obvious) alternative solution is sufficient. It does not have to be an improved solution. What is more, the mere fact that a feature does not provide for an improved solution does not mean that it is non-technical; ¶ 10.3.1.

Next, the Supreme Court discussed the criteria mentioned in the EPO Guidelines for Examination, G-II 3.7:

A feature defining a presentation of information produces a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process (T 336/14 and T 1802/13).

Even though the FPC had not explicitly discussed whether or not the user is credibly assisted in performing a technical task, the Supreme Court holds that the FPC implicitly affirmed this by mentioning that no improvement is necessary; see above. Rightly so; the Supreme Court again referred to the EPO Guidelines for Examination, G-II 3.7:

Such a technical effect is considered credibly achieved if the assistance to the user in performing the technical task is objectively, reliably and causally linked to the feature.

The question is whether it can be assumed that it is useful for medical staff to be able to see the change in volume of the lung being ventilated and the ventilation rate, so that artificial ventilation can be adjusted to suit the patient. The Supreme Court holds that this is undoubtedly the result of the natural anatomical context, just as every user knows the ventilation process and its effects on the patient; ¶ 10.3.2.

Beware of ‘sneak attacks’

Interestingly, at a very early stage of the proceedings the FPC’s delegation at the instruction hearing had apparently indicated that the patentee / plaintiff would have to prove the alleged improvement in the user’s information processing, with suitable pieces of evidence.

Beware of ‘sneak attacks’

imtmedical argued that it was a ‘sneak attack’ (Überraschungsschlag) by the FPC to abstain from this preliminary opinion in the final judgment without further notice, and that this constituted a violation of the right to be heard; ¶ 10.3.3.

The Supreme Court did not buy into that: The interim assessment of the judge-rapporteur at the instruction hearing is non-binding. Moreover, the parties have no constitutional right to be specifically heard on the legal assessment of the facts introduced by them in the proceedings.

imtmedical also asserted a violation of the right to be heard in view of the reformulation of the objective technical problem by the FPC. Indeed, the FPC had reformulated the objective technical problem to a less ambitious one, i.e. to provide for an alternative, without further explanation. The Supreme Court notes that the FPC evidently did so in full conformance with the EPO’s problem-solution approach; ¶ 11.4.2. In any event, the Supreme Court holds that the formulation of the ‘objective technical problem’ is not a factual submission in strict sense:

Likewise, the Supreme Court had no issues with the FPC’s assessment of obviousness and sufficiency of disclosure; ¶ 11.5 and 12, respectively. Further, the witness had not to be heard because the FPC did not actually make use of the piece of evidence offered by Hamilton that the witness had been offered to counter.

Now that the partial decision on infringement is final, it remains to be seen how this litigation continues when imtmedical has provided the information and accounting, as ordered.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_609/2019 (Supreme Court) | Decision of 16 July 2020 » on appeal against O2017_007 (FPC) | Decision of 1 November 2019 »

Hamilton Medical AG (Respondent / Plaintiff)
./.
imtmedical AG (Appellant / Defendant)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellant / Defendant:

Representative(s) of Respondent / Plaintiff:

DECISION OF THE SUPREME COURT
→ on appeal against FPC decision O2017_007 »
Case no.: 4A_609/2020
Decision of: 16 July 2020

DECISION OF THE FPC
→ partial decision, EP(CH) 1 984 805 B1 » is valid and infringed
Case no.: O2017_007
Decision of: 1 November 2019

PATENT IN SUIT

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No oral proceedings by video-conference if parties do not agree

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Case No. 4A_180/2020 (Supreme Court) | Decision of 6 July 2020

Oral proceedings by video-conferencing are currently en vogue, e.g. in the U.K. and The Netherlands, just to name a few. When all parties agree, I have no issue with that. But I am troubled when parties to proceedings are forced into video-conferencing even when they don’t want them, e.g. in first instance proceedings at the EPO; see this Blog here.

Under the Swiss Civil Procedure Code (CPC), the Supreme Court had to deal with an appeal of a party who did not consent with the main hearing being held by video-conference at the Commercial Court Zurich. The hearing was held nevertheless by Zoom, in accordance with a procedural decision of 1 April 2020 (you can’t make this up) — and the respective party did not attend. It was bound to happen: The Supreme Court has now set aside the judgment on the merits in the aftermath of the hearing, in no uncertain terms.

The Supreme Court holds that the CPC requires the physical presence of the persons summoned and the members of the court at the same place. This results, for example, from the provisions governing appearance at the main hearing and the consequences of default; see, for example, Art. 133 lit. d, Art. 134,  Art. 147(1) CPC. The Code of Civil Procedure thus conceives the main hearing as an oral hearing in the courtroom with the parties and members of the court physically present.

On a side note, the EPC is not much different in this respect; see e.g. R. 115(2) EPC (emphasis added); yet a further argument why I believe that the recent draconian move of 1 April 2020 [sic!] to make videoconferencing in first instance proceedings at the EPO mandatory should be revisited:

If a party duly summoned to oral proceedings before the European Patent Office does not appear as summoned, the proceedings may continue without that party.

For this and yet further reasons, the Supreme Court allowed the appeal and set the judgment of the Zurich Commercial Court aside. In doing so, it explicitly did not address the security concerns regarding the use of the ZOOM Cloud Meetings app. You don’t think there are any? The zoom-bombed bond hearing in Florida on 5 August 2020 in the case of Graham Clark, the alleged mastermind of a recent bitcoin scam through the accounts of high-profile Twitter users, is a prime example of what can go wrong.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_180/2020 (Supreme Court) | Decision of 6 July 2020

n/a
./.
n/a

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Defendant / Appellant:

Representative(s) of Respondent / Plaintiff:

DECISION

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