Description established (S2013_008 cont’d)

Case No. S2013_008 ¦ Decision of 30 October 2013 ¦ “Vorsorgliche Beschreibung respektive Beweissicherung”

As discussed in detail in an earlier post, a description had been ordered in this matter without prior hearing of the defendant.

The description was carried out as scheduled on 11 September 2013 and the defendant was served with the protocol in order to comment thereon; Art 77(5) PatA.

In first place, the defendant had requested that the plaintiff shall not be served with the description at all. Defendant argued that the patent had not been limited but rather had its scope shifted to an aliud. Moreover, the defendant alleged an undue extension of subject matter during examination proceedings of the patent in suit. The FPC discussed these issues in detail in the decision but did not agree with defendant.

Moreover, the defendant argued that the patent in suit is not infringed. Measurement data was presented (established 12 September 2013, i.e. the day after the description) to show that the pipes do not possess their final dimension immediately after the allegedly infringed method has been carried out (i.e. a few minutes after the production). However, the FPC did not consider this further data, for the time being. Rather, the FPC relied on an opinion — presumably the opinion provided by a court-appointed expert in nullity proceedings at the BGH in Germany;  Xa ZR 84/05 — in support of the plaintiff’s position.

Die Erfüllung dieses Merkmals in diesem Sinne wird im Gutachten zu einem entsprechenden Muffenautomat der C., welcher bei der D. im Einsatz ist, nach Ansicht des Gerichts, wie bereits in der Entscheidung vom 30. August 2013 festgehalten, glaubhaft gezeigt.

Nevertheless, it was noted that the defendant’s arguments and supporting data would have to be considered in main proceedings (when initiated).

Die weiterführenden neueren Messungen der Beklagten und die zugehörige Argumentation der Nichtverletzung sprengen den Rahmen des vorliegenden Verfahrens, welches lediglich die vorsorgliche Feststellung eines Sachverhalts beinhaltet. Sie werden aber gegebenenfalls im Rahmen eines anschliessenden ordentlichen Verfahrens zu beurteilen sein.

As an auxiliary measure, the defendant had requested that the plaintiff shall only obtain a redacted version of the protocol of the description. 31 items were requested to be blacked out since this information was not decisive for the alleged patent infringement but rather constituted trade secrets. The FPC fully accepted this request and the plaintiff will only be served with an accordingly redacted version of the protocol when the decision has become final.

Court fees (CHF 10’000,–), compensation for the defendant’s legal representation (CHF 8’000,–) and costs incurred by the defendant’s patent attorney (CHF 13’759,20) were charged on the plaintiff. Moreover, defendant’s internal expenditures of CHF 9’105,50 were charged on the plaintiff. The plaintiff may request reimbursement of these costs in main proceedings.

Reported by Martin WILMING


Case No. S2013_008 ¦ Decision of 30 October 2013 ¦ “Vorsorgliche Beschreibung respektive Beweissicherung”

(not identified) ./. (not identified)


  • Precautionary taking of evidence; Art. 158 CPC
  • Preliminary measure to secure evidence; Art. 77 PatA
  • Preliminary measure of a precise description; Art. 77 PatA

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Christoph FRAEFEL (SBMP), assisting in patent matters

Full text of the decision right here:

Download (PDF, 141KB)

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2 Replies to “Description established (S2013_008 cont’d)”

  1. I just noted on the website of the FPC that this decision has already become final (although the term of 30 days has not yet lapsed; the date of the decision is 30 October 2013). This remains to be clarified.

  2. Addendum:

    With letter of 23 September 2013, the plaintiff had requested that the publication of the decision of 30 August 2013 on the internet be immediately retracted, in order to not impair further legal actions against third parties.

    The president of the FPC noted that the publication was in conformance with Art. 25 PatCA and Art. 3(1) IR-PatC. The plaintiff was served with the decision 10 days prior to the publication. He thus had the opportunity to comment on the publication beforehand, but did not do so. Thereafter, there is no legal basis for such request anymore.

    (See #8 of the decision)

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