Enforcement of an injunction: The risk of hyperlinks

Reading time: 6 minutes

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

C&E Fein and Bosch have been litigating with Coram for quite a while, first in summary proceedings (no PI was imposed on Coram; see this Blog here) and subsequently in main proceedings (see this Blog here). The judgment in main proceedings held that EP 362 (see the EPO Register and Swissreg for further information; verbally substantially limited inter partes) was valid and infringed by Coram’s tools with connectors referred to as ‘Quick-Fit’ or ‘Q-Fit’.

Coram appealed, but the Supreme Court dismissed the appeal with judgment of 11 February 2022 (published only yesterday, 6 April 2022). Note that the appeal had no suspensive effect.

While the appeal was still pending, the parties locked jaws again. C&E and Bosch asserted that Coram did not comply with the court order.

Here is what happened:

The FPC handed down its judgment in main proceedings on 1 September 2021. The operative part of the judgment inter alia prohibits Coram to contribute to the offering of the saw blades with infringing ‘Quick-Fit’ connectors:

I take from the judgment that Coram immediately complied with the operative part of the judgment in most parts. Coram does not sell directly to end users, but only to a single distributor, Revotool. Coram immediately stopped its sales to Revotool, recalled infringing items from Revotool and urged Revotool to recall items from downstream distributors.

However, Coram’s website apparently remained unchanged until about 19 October 2022; the landing page still showcased tools with Q-Fit connectors e.g. on 16 September 2021. The tricky thing is that there is a hyperlink («Wo kaufen? […] Händlernetzwerk») at the bottom of the page, that provides a list of all points of sales in Switzerland where Coram products (not all of which are covered by the judgment) can be purchased by end users. The judgment holds that this is covered by the prohibition of contributing to offers. The legal term «Mitwirken» is broad, but clear:

Even though no actual sale of infringing goods has occured, the judgment holds that Coram had an increased duty of care in view of the judgment, and that a hyperlink to webpages where infringing goods are still offered (even though they have apparently not been sold anymore via these webpages!) is not excusable under the circumstances.

After a warning letter, Coram put a disclaimer on its website on or after 19 October 2021 (see e.g. here, 30 November 2021):

Das Angebot der Quick-Blätter gilt nicht für die Schweiz. Es werden keine Sägeblätter mit der Quickaufnahme in die Schweiz verkauft.

The judgment holds that this did not resolve the issue, but rather amounts to a somewhat contradictory behavior. The disclaimer indicated non-availability in Switzerland, but some points of sale that were hyperlinked by Coram still offered infringing tools.

Calculation of the administrative fine
you’ve been bad!

The initial threat was an administrative fine of CHF 1’000,– per day. The judgment acknowledges that Coram did not entirely ignore the operative part of the judgment and holds that the violation was only minor («minderschwer»). Further, Coram did not act wilfully, but only negligently. With the disclaimer in place after 19 October 2021, the violation is held to be even less severe. Accordingly, the daily fine was set to CHF 300,– for each day of violation until 19 October 2021, and CHF 100,– for each day thereafter.

Even though the max. fine was reduced by 70% and 90%, respectively, the overall fine still amounts to CHF 16’800,–. The overall bill for Coram is CHF 25’800,–, including a court fee of CHF 4’000,– and a partial refund of plaintiffs’ expenses for legal representation of CHF 5’000,–. That’s quite some money for a negligent hyperlink to some point of sales websites that still showed infringing offers which did not result in a single sale.

Coram’s second generation ‘Quick-Fit’

Here is an example of Coram’s tools with the first generation ‘Quick-Fit’ or ‘Q-Fit’ connectors :

You will readily appreciate the hexagon shape of the connector. Accordingly, there are six driving area regions in the first generation ‘Q-Fit’ connectors — an even number between 4 and 32 in accordance with the verbally limited claim.

Apparently, this fits well into the dodecagon shape of Starlock® fittings of Bosch and C&E Fein:

Starlock® fitting and tool  with dodecagon shape
‘Q-Fit’ (gen. 2)

Interestingly, a heptagon shape apparently is also compatible with the Starlock fitting. Coram’s second generation ‘Q-Fit’ (see e.g. the header image) that has been introduced into the market apparently in due consideration of the injunction has no even number of driving area regions anymore.

A smart move, this quick fix second gen “Q-Fit”, isn’t it?

/MW

BIBLIOGRAPHY

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Daniel M. ALDER
    • Dr. Markus A. MÜLLER

Judge-rapporteur:

    • Dr. Daniel M. ALDER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUMMARY JUDGMENT / ENFORCEMENT

JUDGMENT ON THE MERITS

PATENT IN SUIT

BE ON THE KNOW

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

Print Friendly, PDF & Email

Leave a Reply

Your email address will not be published.