Don’t ever forget the potential security for party compensation, foreign plaintiffs!

Case No. O2014_008 ¦ Decision of 05 March 2015 ¦ “Inammissibilità dell’azione per mancata prestazione delle garanzie per spese ripetibili”

The plaintiffs JHD Acquisitions SA and Thermoself SA had sued the defendants for assignment of two patent families, i.e. i) EP 1 896 343 B1 and CH 698 072 B1; and ii) CH 703 828 A2WO 2012/038819 A1 and nationalizations thereof.

One of the defendants is the inventor / registered proprietor of the aforementioned patents, i.e. Giuseppe Sarcinella — a former member of the board of Thermoself until 2011. The other defendant is Suricate SA. The patent families in dispute pertain to flexible container with built-in auto-heating or -cooling, e.g. for beverages. In this video of Thermaself, it is explained how such systems can be used for mulled wine:

Some similarities of the product presentations of Thermoself and Suricate are astonishing: Even the same icons are used; see below.

Sounds like an explosive mixture, doesn’t it? But no, the case did not even get under steam. JHD Acquisitions SA is a company incorporated in Panama. In view of this international context, the defendants requested that the plaintiff be obliged to provide security for the defendants’ costs (Art. 99(1) lit. a CPC) in the amount of CHF 75’000,–. The plaintiffs then argued that the rights in the patents had been resold to MPMC Intellectual Property SA (a company incorporated in Switzerland). This company would replace JHD Acquisition SA as a plaintiff, and the security for the defendants’ costs would thus have become moot. It did not work out that easy. The FPC held that the transfer of the position as a plaintiff had not been sufficiently established, and the security for defendants’ costs was fixed by the FPC to CHF 62’000,–.

Now, how to reduce that security? It depends on the value in dispute. Next, the plaintiffs tried to reduce the value in dispute to only CHF 30’000,–, since the patents had not yet generated any income and the defendants had acted in bad faith. Even though the plaintiffs had estimated the value in dispute to “at least” CHF 30’000,– in the writ, the FPC had already fixed the value in dispute to CHF 500’000,–. And, noteworthy, the plaintiffs had duly provided the accordingly calculated advance payment of court fees of CHF 25’000,–. Unsurprisingly, the FPC had no reason to reduce the value in dispute at this stage of the proceedings: It is not decisive whether the patents had already generated income or not; it rather is the potential interest of the parties that counts. And the alleged bad faith of the defendants can only be taken into consideration after examination of the case on the merits.

Finally, the plaintiffs did not provide the required security for the defendants’ cost, and the FPC consequently did not consider the case. Nevertheless, the court fee was set to CHF 20’000,–. Obviously, the case was cumbersome and time-consuming for the FPC:

A causa delle insolite modalità seguite dalle parti nel compiere gli atti processuali, per il Tribunale la causa è risultata impegnativa. Conclusioni manchevoli, confusione riguardo alla contemporanea introduzione di una causa presso il Tribunale d’appello di Lugano nonché riguardo alla rappresentanza della attrici e un atto inammissibile inoltrato dalle attrici hanno richiesto continui interventi da parte del Tribunale. A queste complicazioni si aggiunge anche il dispendio in rapporto con l’esame dell’invocata sostituzione di parte e con la richiesta di cauzione.

In the meantime, the decision has already become final.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_008 ¦ Decision of 05 March 2015 ¦ “Inammissibilità dell’azione per mancata prestazione delle garanzie per spese ripetibili”

(1) JHD Acquisition SA; (2) Thermoself SA

./.

(1) Giuseppe Sarcinella; (2) Suricate SA

Subject(s):

  • Costs: Party compensation

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)
  • Susanne ANDERHALDEN (First Court Clerk)

Representative(s) of Plaintiff:

  • Matteo and Luca BAGGI (Baggi)

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

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