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):

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

There is an end to everything, even a flow sensor

Reading time: 3 minutes

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


BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Supreme Court endorses Comvik approach

Reading time: 7 minutes

Case No. 4A_609/2019 (Supreme Court) | Decision of 16 July 2020 » on appeal against O2017_009 (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

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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

Reading time: 3 minutes

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

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

The final curtain for the complaint re heavy vehicle charges?

Reading time: 2 minutes

Case No. 4A_222/2020 (Supreme Court) | Decision of 16 June 2020 on appeal against O2017_025 | Order of 10 March 2020

This case pops up once in a while. We had reported about it already on this Blog here and here. It relates to a method and system carried out / installed in Switzerland for collecting the heavy vehicle charges. In brief, the plaintiff had been granted legal aid for preparing and filing an infringement complaint. After the first exchange of briefs, the judge-rapporteur had prepared an expert opinion re validity of the patent-in-suit — which did not play out favourable. Accordingly, the FPC withdrew the legal aid for the further course of the proceedings:

with order of 10 March 2020, in view of the likelihood of invalidity and because claims for monetary compensation have become invalid anyhow.

The plaintiff / patentee now has to submit the completed reply on his own costs, pay advance court fees of CHF 20’000,– and yet further CHF 50’000,– as security for party compensation. The Supreme Court did not even consider plaintiff’s appeal, for lack of sufficient reasoning. It remains to be seen whether this case will go on, or whether this is the end. Stay tuned.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_222/2020 (Supreme Court) | Decision of 16 June 2020 on appeal against O2017_025 | Order of 10 March 2020

n/a (Appellant / Plaintiff)
./.
1. B. GmbH (Defendant)
2. C. SA (Defendant)
3. Swiss Confederation (Respondent / Notified Party)

Panel of Judges:

    • Dr. Christina KISS

Court Clerk:

    • Dr. Matthias LEEMANN

Representative(s) of Plaintiff:

    • n/a

Representative(s) of B. GmbH:

Representative(s) of C. SA:

    • Dr. Peter K. Neuenschwander (SN&P)

Representative(s) of the Swiss Confederation:

    • Peter WIDMER (FMP)
    • Dr. Cyrill RIEDER (FMP)

DECISION OF THE SUPREME COURT
→ appeal against FPC order denying (further) legal aid
Case no.: 4A_222/2020
Decision of: 16 June 2020

ORDER OF THE FPC
→ denying (further) legal aid
Case no.: O2017_025
Order of: 10 March 2020
The order is unpublished. Unfortunately.

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

No cherry-picking: Supreme Court endorses EPO case-law re singling out

Reading time: 3 minutes

Case No. 4A_613/2019 (Supreme Court) | Decision of 11 May 2020 on appeal against O2017_009 (FPC) | Decision of 7 November 2019

MundiPharma’s EP(CH) 2 425 821 B1 and EP(CH) 2 425 824 B1 had been revoked by the FPC with decision of 7 November 2019; O2017_009. Accordingly, MundiPharma’s counterclaim for infringement failed. A detailed comment on that decision is available on this Blog here.

MundiPharma had appealed the decision, but only with respect to EP(CH) 821:

The decision of the Supreme Court gives an overview of some relevant decisions of the Boards of Appeal of the EPO concerning Art. 123(2) EPC in ¶ 3.2, which the Supreme Court apparently endorses without hesitation. As to the matter at hand, the Supreme Court confirms that the FPC had correctly applied these principles and that the subject-matter of EP(CH) 821 is the result of an unallowable singling out of at least two features from different lists. The resulting combination of features, i.e. the weight ratio of oxycodone to naloxone of 2:1 in combination with the reduction of obstipation, is not directly and unambiguously disclosed in the application as originally filed; see ¶¶ 3.3 and 3.4. In particular, MundiPharma could not establish how the skilled person would have derived the specific weight ratio and the reduction of obstipation in combination from the application as filed:

Further, the Supreme Court did not spot a violation of MundiPharma’s right to be heard because the FPC allegedly did not take the skilled person’s knowledge into account. The Supreme Court holds that the FPC in fact did take it into account, and that MundiPharma essentially only argues that it had a different opinion of how the law and case-law should be applied to the case at hand:

Finally, the Supreme Court dealt with MundiPharma’s objection concerning the apportionment of costs. It may well be that in a nullity case the necessary expenses incurred by the assisting patent attorney exceeds the amount that can be refunded for legal representation according to the tariff:

Oral proceedings before a Board of Appeal in co-pending proceedings at the EPO are scheduled for 23 September 2021, to be continued on 24 September 2021 if necessary. No preliminary opinion of the Board is available yet.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_613/2019 (Supreme Court) | Decision of 11 May 2020 on appeal against O2017_009 (FPC) | Decision of 7 November 2019

MundiPharma Medical Company (Appellant / Defendant)
./.
Develco Pharma Schweiz AG (Respondent / Plaintiff)

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 Appellant / Defendant:

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

Representative(s) of Respondent / Plaintiff:

DECISION OF THE SUPREME COURT
→ appeal against FPC decision to revoke EP(CH) 2 425 821 B1
Case no.: 4A_613/2019
Decision of: 11 May 2020
The unredacted decision had been submitted by the Respondent / Plaintiff in the co-pending opposition / appeal proceedings at the EPO:

DECISION OF THE FPC
→ Revocation of EP(CH) 2 425 821 B1
Case no.: O2017_009
Decision of: 7 November 2020

PATENT IN SUIT

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Late stage partial waiver of a patent: No appropriate ways to deal with them?!

Reading time: 6 minutes

Case No. 4A_420/2019 (Supreme Court) | Decision of 13 May 2020 on appeal against O2016_001 | Decision of 27 June 2019

We had reported about the decision of the FPC on this Blog here.

In brief, Harcane Sàrl had sued Comadur essentially to the effect that CH’572 be declared invalid (based on Art. 26(1) lit. a PatA, not lit. d); or, alternatively, if CH’572 was held valid, that it be transfered to Harcane Sàrl. See Swissreg for further bibliographic information on CH’572; an automated translation can be found here.

Comadur partially waived CH’572 with the rejoinder; Art. 24(1) lit. c PatA. The FPC had dismissed Harcane Sàrl’s requests and maintained CH’572 in partially waived form.

Harcane Sàrl’s appeal has now been dismissed by the Supreme Court.

On a formal issue, I have learned from the Supreme Court decision that deletion of dependent claims 7-10 in the conclusions of the FPC decision (p. 41-42) happened by accident. A rectified decision has apparently been issued ex officio on 13 November 2019 (unpublished):

On appeal, Harcane Sàrl challenged admissibility of the partial waiver, for various reasons: In first place, the amended claims were not directed to the same invention (contrary to Art. 24(1) lit. c PatA); alternatively, the claimed subject-matter was obvious (contrary to Art. 1(2) PatA) and not applicable in industry (contrary to Art. 1(1) PatA). The Supreme Court held that these objections have apparently not been raised before the FPC — but they could and should have been raised there:

L’argumentation ci-mentionnée est nouvelle et elle ne s’impose pas en raison des motifs du jugement attaqué. La demanderesse ne paraît pas avoir été empêchée de la soulever déjà devant le Tribunal fédéral des brevets, notamment au stade des débats principaux; elle a simplement omis de le faire.

The Supreme Court thus held that the appeal was inadmissible to the extent nullity / allowability of the partial waiver is concerned.

Still, there is an interesting sidenote on late stage partial waiver in general, and the procedural issues they cause. The Supreme Court did not mince matters (loose translation):

The partial waiver obviously introduced a very important change in the subject matter of the dispute. Neither the CPC nor the PatCA explicitly provides for a procedure appropriate to this situation. Usually, however, a partial surrender is suitable to allow a simplification of the proceedings ([…]). At first glance, it would have been appropriate to issue an interim decision in accordance with Art. 237 CPC on the partial waiver requested by the Respondent and then to invite the Claimant to refocus their arguments. This could have been done in the context of Art. 125 CPC, since this provision does not exhaustively list measures to simplify the proceedings ([…]).

Here is the original wording in French:

In my understanding, compliance of a partial waiver with Art. 24(1) lit. c PatA has to be examined ex officio. Accordingly, the Supreme Court notes that the court must examine (“[…] doit […] vérifier […]”) whether the newly formulated claims validly reduce the scope of the patent in suit; ¶3. By the way, the FPC did so (even though very briefly):

Frankly, I am not fully convinced that an interim decision would really simplify the proceedings. On the contrary, I feel it would rather lengthen the proceedings, except for clear cut cases of non-compliance with Art. 24(1) lit. c PatA — which I understand was not the case here, in the FPC’s view; and Harcane Sàrl did apparently not argue that in first instance proceedings, either.

In my perception, the current practice of the FPC to instead invite the counterparty to comment on new factual allegations in the rejoinder within a time period fixed by the court is fit for purpose. The partial waiver clearly is a new factual allegation, and the counterparty actually is already provided with a possibility to refocus their arguments.

On the other hand, in a situation where the FPC considers that a partical waiver is non-compliant with Art. 24(1) lit. c PatA but both parties remained silent on this issue, the parties could be invited to complete their pleadings on this issue in any event, with or without a subsequent interim decision in this respect; Art. 56 CPC.

A further aspect of the decision relates to the value in dispute. The parties had proposed widely differing values, i.e. kCHF 80 and kCHF 660, respectively. The FPC had fixed the value in dispute to kCHF 500, in view of the hard fight of the parties before the various courts and the considerable economic value of the subject-matter of the patent. The Supreme Court held that the FPC has some discretion in fixing the value in dispute, and that there was no apparent abuse of this discretion. In particular the Supreme Court held (¶5, loose translation):

Contrary to the plaintiff’s opinion, the outcome of the litigation cannot influence the estimate of the value in dispute and it is therefore irrelevant whether the patent will eventually be deemed invalid.

With respect to the cost issue, the appeal was thus held admissible, but ill-founded.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_420/2019 (Supreme Court) | Decision of 13 May 2020 on appeal against O2016_001 | Decision of 27 June 2019

Harcane Sàrl (Appellant / Plaintiff)
./.
Comadur SA (Respondent / Defendant)

Panel of Judges:

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

Court Clerk:

    • Antoine THÉLIN

Representative(s) of Plaintiff:

    • Jean-Claude SCHWEIZER (SLB)

Representative(s) of Defendant:

DECISION OF THE SUPREME COURT (II)
→ appeal against FPC decision dismissed
Case no.: 4A_420/2019
Decision of: 13 May 2020

DECISION OF THE FPC
→ patent maintained / partially surrendered; plaintiff’s claims dismissed
Case no.: O2016_001
Decision of: 27 June 2019

DECISION OF THE SUPREME COURT (I)
in a related matter, referred to in ¶13 of the FPC decision and Section B of the later Supreme Court decision 4A_420/2019
Case nos.: 4A_584/2017
4A_590/2017
Decision of: 9 January 2019

PATENT IN SUIT

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

The final curtain: The salt form identified in an SPC doesn’t matter (much)

Reading time: 4 minutes

Case No. 4A_274/2019 (Supreme Court) | Decision of 26 November 2019, on appeal against O2017_023  (FPC) | Decision of 3 May 2019 | ‘SPC, salt form’

DISCLOSURE NOTICE

Hepp Wenger Ryffel is involved in this case on behalf of the appellant / defendant.

Readers of this Blog will recall the infringement case of Gilead’s SPC C00915894; the basic patent is EP 0 915 894 B1 (see EPO Register and Swissreg). Gilead’s products are Truvada® and Atripla® which are pharmaceuticals for the treatment of HIV-1 infection.

The dispute is all about whether or not the scope of an SPC that specifically refers to a unique salt form does extend to other salts. The SPC concerns ‘tenofovir disoproxil fumarat + emtricitabin’ (emphasis added). Mepha’s attacked generics (Swissmedic MAs No. 66181 and 66217) instead comprise tenofovir disoproxil phosphate.

Now, is that still the same ‘product’ in the sense of Art. 140d PatA?

The FPC had issued a PI in summary proceeding S2017_006; see this Blog here. Validity of the SPC was not an issue anymore, this had already been affirmed by the Supreme Court; see this Blog here. Later, the finding of infringement had been confirmed in main proccedings O2017_023; see this Blog here.

Mepha appealed. But with reference to the ECJ’s reasons given in C-392/97Farmitalia (¶¶ 17-22), the Supreme Court has confirmed the FPC’s finding of infringement in late 2019:

If derivatives are covered by the scope of protection of a patent which have the same pharmacological effect as the product listed in the marketing authorisation, they are also protected by the SPC.

... with the same pharmacological effect as the product identified in the MA are covered by the SPC, to the extent they are also covered by the basic patent.

Accordingly, the Supreme Court dismissed the appeal.

This could have been it. But the Supreme Court also expanded on the FPC’s secondary line of reasons with respect to infringement of the SPC under the DoE. And this is where things went somewhat astray, in my opinion.

It appears as if the Supreme Court considered the scope of a patent to be a matter of fact, not a matter of law.

Loosely translated (third to fifth and last sentence of the above citation):

The complaint is based on the assumption that combinations of active substances are not covered by the basic patent. As mentioned, however, it was bindingly established by the lower court that combinations were covered by the scope of the basic patent. Since submissions with reference to facts that differ from those established in the contested decision cannot be taken into account, the complaint made by the appellant cannot be considered. […] Here, too, the appellant fails to recognise that the fumarate salt of the active substance tenofovir-disoproxil is covered by the basic patent according to the binding findings of the lower court.

Clearly, it was not in dispute that the scope of the basic patent covered the attacked embodiment — what I hope is the reason why the Supreme Court holds that this has been ‘bindingly established’ by the FPC. Else, the Supreme Court surely reviews issues of scope; see e.g. 4A_131/2016Urinalventil and 4A_208/2017Pemetrexed.

But coverage by the scope of the basic patent is only one of many aspects in the assessment of infringement of an SPC under the DoE; see O2017_023, ¶¶ 35 et seqq. I have the vague feeling that the Supreme Court missed the point here. But be this as it may, this obiter dictum is irrelevant for the outcome of the matter.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_274/2019 (Supreme Court) | Decision of 26 November 2019, on appeal against O2017_023  (FPC) | Decision of 3 May 2019 | ‘SPC, salt form’

Mepha Pharma AG (Appellant / Defendant)
./.
Gilead Sciences Inc. (Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Kathrin KLETT
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    •  Nicolas CURCHOD

Representative(s) of Plaintiff / Respondent:

    • Dr. Simon HOLZER (MLL)
    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Michael RITSCHER (MLL)

Representative(s) of Defendant:

SUPREME COURT DECISION

on appeal against decision O2017_023 of 3 May 2019:
4A_274/2019 26 November 2019

SECOND FPC DECISION

in main proceedings, following up on decision S2017_006 of 12 October 2017:
O2017_023 3 May 2019

FIRST FPC DECISION

in summary proceedings:
S2017_006 12 October 2017

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

The Supreme Court will not have its say on O2018_009 re Fulvestrant

Case No. 4A_332/2019 (Supreme Court) | Order of 13 November 2019, on appeal against O2018_009  (FPC) | Decision of 27 May 2019 | ‘Patentnichtigkeit Fulvestrant’

Reading time: 3 minutes

A quick recap: Actavis had challenged validity of AZ’s Swiss part of EP 2 266 573 back in 2015, and the FPC had indeed held in 2017 that EP 573 was invalid for lack of inventive step; see this Blog here. However, the Supreme Court overruled that decision and remitted the case back to the FPC for re-assessment of obviousness; see this Blog here. In the second round, the FPC held that the subject-matter of EP 573 did involve an iventive step; see the decision O2018_009 of 27 May 2019. In brief, the FPC held that neither

rendered the claimed subject-matter obvious. That decision was again appealed to the Supreme Court, and I have been eagerly awaiting a good read. But nothing like that. The Supreme Court only published a dismissal order. The parties have apparently reached an amicable settlement; court fees are shared.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_332/2019 (Supreme Court) | Order of 13 November 2019, on appeal against O2018_009  (FPC) | Decision of 27 May 2019 | ‘Patentnichtigkeit Fulvestrant’

Mepha Schweiz AG
(formerly Actavis Switzerland AG)
(Appellant / Plaintiff)
./.
AstraZeneca AB (Respondent / Defendant)

Single Judge:

    • Dr. Kathrin KLETT

Court Clerk:

    •  Dr. Thomas WIDMER

Representative(s) of Appellant / Plaintiff:

Representative(s) of Respondent / Defendant:

    • Dr. Michael RITSCHER (MLL)
    • Dr. Kilian SCHÄRLI (MLL)

SUPREME COURT DECISION

Fullscreen view (new tab)

FPC DECISION

Fullscreen view (new tab)

EP 2 266 573 B1

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

 

Lilly’s EP 1 313 508 on combination of pemetrexed and vitamin B12 held valid

Case No. O2018_003 | Decision of 15 October 2019 | “Patentnichtigkeit; Pemetrexed”

The patent in suit is Lilly‘s EP 1 313 508 B1; see the EPO Register and Swissreg for further details. In a nutshell, EP’508 relates to combination of pemetrexed disodium and vitamin B12. See this Blog here for a discussion about earlier infringement proceedings concerning the same patent.

Now, nullity is at stake.

An Opposition Division of the EPO had maintained the patent as granted with decision of 27 December 2010; an appeal had initially been lodged but withdrawn later. Related decisions in civil proceedings elsewhere had also addressed the validity of EP’508, e.g. in

Thus, it was an uphill fight for the plaintiff. And even though the FPC took the parallel decision of the German FPC into account, it explicitly disagreed. It is held on p 19 (penultimate and lastparagraph), that the German FPC erred with the finding that

[…] bei einer Pemetrexedgabe durch die Blockierung der drei Schlüsselenzyme Thymidylatsynthase (= TS), Dihydrofolatreduktase (= DHFR) und Glycinamidribonukleotidformyltransferase (= GARFT) im «DNA- Zyklus» nicht nur dieser Zyklus, sondern auch der «Methylierungszyklus» blockiert wird.

Consequently, the FPC did not put much weight (if any) on the parallel decision in Germany.

On the contrary, the decision holds that the claimed subject-matter was novel over Worzalla et al. since mere reference to a diet ‘Purina Chow #5001’ did not implicitly, yet clearly and unambiguously, disclose the presence of vitamin B12 (or folic acid).

Further, the decision rejects plaintiff’s argument re obviousness over Niyikiza et al. (abstract 609P bridging pages 126/127), Niyikiza et al. (abstract 2139 on the top right, referred to as act. 7_10 in the decision), the IBIS Guide to Drug-Herb and Drug Nutrient Interactions, Jackman and Calvert (which had been considered as closest prior art in EPO opposition proceedings).

The decision has been appealed to the Supreme Court.

A discussion of this decision is also available on the EPLAW Blog, provided by defendant’s counsel.

UPDATE 18 June 2020:

The Supreme Court has dismissed Sandoz’s appeal with decision of 1 May 2020 (published 17 June 2020); the full judgment is available here.

The operative part of the judgment has been published earlier by Lilly’s counsel on EPLaw Blog; available here.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_003 | Decision of 15 October 2019 | “Patentnichtigkeit; Pemetrexed”

Sandoz Pharmaceuticals AG

./.

Eli Lilly & Company

Panel of Judges:

    • Dr. Daniel ALDER
      • Dr. Roland DUX
      • Marco ZARDI

Court Clerk:

    •  Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Markus WANG (Bär & Karrer)
    • Christoph FRAEFEL (SBMP), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

Fullscreen view (new tab)

Non-official English translation (first published on the EPLAW Blog):

Fullscreen view (new tab)

PATENT IN SUIT

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

The public may be excluded from settlement discussions — but maybe not from the instruction hearing in general?

Reading time: 3 minutes

As discussed a while ago on this Blog here, the settlement discussion at the occasion of a main hearing is non-public at the FPC. I trust that this will not change any time soon, in view of a decision of the Supreme Court that has been published earlier this week (4A_179/2019 of 24 September 2019). In that case, an accredited court reporter of the Republik had been asked to leave the room for the settlement discussion at the end of a main hearing in proceedings at the Zurich labor court. Ultimately, the Supreme Court has now endorsed this exclusion of the public from the settlement discussion:

Die Bemühungen des Gerichts, zwischen den Parteien zu vermitteln, gelten nicht als Gerichtsverhandlung respektive Verhandlung und unterstehen nicht dem Grundsatz der Justizöffentlichkeit.

Now, what about instruction hearings according to Art. 226(2) CPC?

Maybe, the Supreme Court telegraphed a message by explicitly saying nothing (emphasis added):

Demgegenüber ist hier nicht zu beurteilen, ob es zulässig wäre, die Öffentlichkeit über die Vergleichsgespräche hinaus generell von Instruktionsverhandlungen auszuschliessen, zumal an solchen nach Art. 226 Abs. 2 ZPO unter anderem auch der Sachverhalt ergänzt und die Hauptverhandlung vorbereitet werden kann ([…]).

In English (emphasis added):

On the other hand, it is not necessary here to assess whether it would be permissible to generally exclude the public from instruction hearings beyond the settlement discussions, especially since, according to Art. 226 para. 2 CPC, the facts of the case can be supplemented and the main hearing can be prepared in the instruction hearings ([…]).

The FPC took note. Here is the FPC’s tweet of earlier today:

Indeed, the Supreme Court did leave it undecided whether the public could also be excluded from the formal part of an instruction hearing. Still, the Supreme Court made it crystal clear that it does not want to see its judgement being read on instruction hearings in general, in view of what is (or maybe) going on in (the formal part of) an instruction hearing — contrary to mere settlement discussions, be it during a main hearing or an instruction hearing.

In my perception, that’s a somewhat deafening silence on this issue, isn’t it?

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_179/2019 (Supreme Court) |  Decision of 24 September 2019, on appeal against RA190002-O/U (High Court, Zurich) | Decision of 6 March 2019 (unpublished)

[accredited court reporter, Republik] (Appellant)
./.
Labour Court, Zurich (Respondent)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Kathrin KLETT
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    •  Dr. Christian KÖLZ

Representative(s) of Appellant:

    • Marin FARNER (FWE)

Representative of Respondent:

    • n/a

SUPREME COURT DECISION

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

No split reply anymore?!

Case No. 4A_70/2019 (Supreme Court) |  Decision of 6 August 2019, on appeal against O2016_009  (FPC) | Decision of 18 December 2018 | ‘Durchflussmessfühler’

Reading time: 5 minutes
Return to sender

I have reported about the first instance decision of the FPC on this Blog here.

Frankly, I did not see this coming:
With the present decision the Supreme Court quashes the FPC’s decision of 18 December 2018 in case O2016_009.

Do you remember the hn of that decision? Here it is again:

If in a patent infringement proceeding the plaintiff files before the instructional hearing a reply limited to the defense of the validity and no pleadings take place at the instructional hearing, the plaintiff may submit new allegations of fact, and therefore also amended patent claims, in the completed reply filed after the instructional hearing without having to meet the requirements of art. 229 para. 1 CPC.

Well, and now: Forget it! The Supreme Court turned the hn upside down, in no uncertain terms.

The FPC had held that there was no reason for a plaintiff bringing a claim for infringement to address nullity of his patent. The Supreme Court does not agree and holds that the plaintiff could well have addressed potential nullity arguments already in the statement of claim, even though he might not yet know the potential nullity arguments for sure at that time. Thus, the plaintiff in the case at hand actually had three chances to submits new facts and evidence before closure of the file, constrary to the meanwhile established case law of the Supreme Court; see e.g. BGE 144 III 117.

As if this was not enough, the Supreme Court apparently even has doubts as to whether a thematic split of the reply is admissible and sensible at all.

Ob eine thematische Aufteilung der Replik zulässig ist, erscheint fraglich ([…]). Es ist ausserdem zweifelhaft, ob eine derartige Vorgehensweise überhaupt sinnvoll ist, setzt sie doch mindestens voraus, dass sich die vorweggenommene Frage klar vom übrigen Prozessstoff abgrenzen lässt, was die Beschwerdegegnerin mit guten Gründen für die Frage der Patentnichtigkeit im Verhältnis zur Frage der Verletzung bestreitet.

Accordingly, the FPC’s recent note on Twitter mentioned that this decision puts the practice of a split reply in question:

In my perception, this puts more than just the split reply at question. The split reply was to ensure that the instructional hearing could efficiently be held after a first round of submissions by both parties on all aspects of the case, and to bring about a settlement; and the FPC has been pretty successful at this over the years. See e.g. the FPC’s Annual Report 2018 (p. 8):

The high ratio of cases settled is due to the practice of holding an instructional hearing at a relatively early stage of the procedure, during which a court delegation provides the parties with a preliminary legal and technical assessment of the dispute and tries to foster a settlement.

Apart from the split reply with the instructional hearing in between, I do not yet see a different way to bring the parties willingly at the table at an early point of time in the proceedings, to talk settlement.

Despite the potential impact on any future case at the FPC, it remains to be seen whether this win will actually carry the day for the defendant / appellant in the case at hand: The Supreme Court formally submitted the case back to the FPC to assess whether the submission of new claims by the plaintiff with the second reply was admissible under Art. 229(1) lit. b CPC (improper novum) — but it is already explicitly held in the decision that there is some indication that filing of these claims was occasioned by the defendant’s submission of a particular prior art document (¶2.5.3-2.5.4).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_70/2019 (Supreme Court) |  Decision of 6 August 2019, on appeal against O2016_009  (FPC) | Decision of 18 December 2018 | ‘Durchflussmessfühler’

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

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Appellant / Defendant:

Representative of Respondent / Plaintiff:

SUPREME COURT DECISION

Fullscreen view (new tab)

FPC DECISION

Fullscreen view (new tab)

CH 701 755 B1

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.