Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”
— THE DECISION IN A NUTSHELL —
If an ex parte interim injunction is requested, the FPC will — to a certain extent — anticipate potential counter-arguments of the defendant ex officio, and evaluate their cogency. Novelty and involvement of an inventive step was not offhandedly assumed for a Swiss patent that is unexamined on the merits, since (i) the IPRP of the underlying PCT application denied novelty; and (ii) counter-arguments of the plaintiff / patentee re novelty and inventive step were not found convincing. Consequently, the interim injunction was not granted ex parte.
— THE DECISION IN MORE DETAIL —
As a general rule, Art. 261(1) CPC provides that a court shall order interim measures required provided the applicant shows credibly that: (a.) a right to which he or she is entitled has been violated or a violation is anticipated; and (b.) the violation threatens to cause not easily reparable harm to the applicant.
While interim measures are regularly dealt with in inter partes proceedings, ex parte interim measures may also be granted according to Art. 265 CPC: In cases of special urgency, and in particular where there is a risk that the enforcement of the measure will be frustrated, the court may order the interim measure immediately and without hearing the opposing party. This is frequently referred to as a super-provisional measure.
Thus, the law provides for such super-provisional measures. And the FPC has already granted a few of them. However, in none of these cases super-provisional injunctive relief was granted. And the present case it not (yet) the one that got away. But it provides further guidance on how the FPC actually deals with such requests.
It is common sense that the court has to examine a request for super-provisional measures circumspectly: The court must not offhandedly infer the credibility of the (qualified) endangering, but rather has to request proof, besides a plausible presentation of the facts (see p. 7536, penultimate para. of the dispatch of the Federal Council on the Civil Procedure Code).
However, what does this mean in patent litigation matters?
The FPC now took the opportunity to further shape the actual requirements in a hands-on example. Let’s have a brief look at the technical matter at stake. Even though it is not explicitly mentioned in the decision, it is clear that CH 708 247 B1 and WO 2013/174738 A1 are at stake. For further bibliographic details, please see Swissreg with regard to the Swiss patent and Patentscope with regard to the PCT application, respectively.
The PCT application had been nationalised in Switzerland and proceeded to grant, but without any examination on the merits (Art. 59(4) PatA). Therefore, the FPC must not offhandedly assume validity of the Swiss patent if ex parte interim measures are requested. Rather, further indication in support of the validity of the Swiss patent is necessary, such as e.g. an official search report or an international preliminary report on patentability (IPRP); see e.g. S2013_005, r. 3. Here, an IPRP was indeed available — but novelty was explicitly denied therein. Note that the claims of the Swiss patent and the PCT application are identical. Of course, the plaintiff did not agree with the findings of the IPRP and presented arguments in support of novelty over all documents cited in the IPRP. However, the FPC concluded that the findings of the IPRP re lack of novelty were prima facie not refuted. But even if the FPC would have followed the plaintiff’s reasoning re novelty, the plaintiff apparently failed to present convincing arguments re inventive step. In this regard, the FPC again reiterated that it is essential to define the person of skill in the art whenever inventive merit is being discussed. Moreover, it has to be shown why the person of skill in the art would not have arrived at the claimed solution, e.g. on the basis of the problem-and-solution approach established in EPO proceedings. The FPC briefly assessed the potential involvement of an inventive step and concluded that obviousness over D1 (EP 2 248 485 A1, in particular Fig. 5, 6 and 8) could not be ruled out by prima facie evidence, in further view of D3 (WO 2011/027229 A2).
My personal take-away message from the decision is the following:
To a certain extent, the court thus has to anticipate potential counter-arguments of the defendant ex officio, and to evaluate their cogency.
Evidently, the hurdle for an ex parte interim injunction is high — but not insurmountable. The FPC explicitly notes what has been missing here:
For an ex parte interim injunction to be granted, and if a negative IPRP has been issued, the FPC needs to be in a position to conclude prima facie and at least on the basis of the plaintiff’s submission that novelty and inventive step is nevertheless given.
This was not the case here. The request for ex parte interim injunctive relief was dismissed and the defendant was given the opportunity to reply.
— WHAT’S UP ON THE MARKET —
Patentees are Martin BÄCHLER and Jürg BÄCHLER, who are members of the board of directors of Valoc AG. In my perception, the retention inserts for the fixation of Valoc’s Novaloc™ matrices are products according to the patent in suit.
(retention value: strong)
For more information on this system, please revert to the product brochure and the flyer. To better understand mounting and removal of the retention insert, the following video may help:
There is no indication at all in the decision as to the identity of the defendant.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”
(not identified) ./. (not identified)
Subject(s):
- Infringement
- Interim measures without hearing the defendant
- Dental retention insert
Composition of the Board of the FPC:
- Dr. Dieter BRÄNDLE (President)
- Dr. Tobias BREMI
- Dr. Kurt SUTTER
Representative(s) of Plaintiff:
- Dr. Michael RITSCHER (MLL)
- Dr. Mark SCHWEIZER (MLL)
- Silvan LATSCHA (Latscha Schöllhorn), assisting in patent matters
Representative(s) of Defendant:
- (n/a)
— FULL TEXT OF THE DECISION —
