Green lights given to Stadler’s KISS

Case No. 4A_427/2016 (Supreme Court) ¦ Decision of 28 November 2016 ¦ “Patent; novelty-destroying publication”

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendants.

For a review of the FPC’s underlying decision O2012_043 of 10 June 2016, please see this Blog here. In brief, Bombardier alleged infringement of EP 1 963 157 B1 (see EPO Register and Swissreg for bibliographic details). Stadler’s electric double-deck trains RABe 511 KISS were at stake, more specifically the pairwise arrangement of transformer units and power converter units at the wheel units of the train. The defendants of the Stadler group of companies essentially argued for nullity as a plea in defense and alleged a prior user right; Art. 35 PatA.

The FPC held that EP’157 is not novel over documents which had been sent by ABB to both Siemens and Stadler in parallel, in an informal reply to a request for an offer from Siemens. The mere fact that ABB deliberately distributed the documents not only to Siemens but also to yet another third party (the defendant) made clear that ABB had no interest in any confidentiality. The alleged prior user right had been acknowledged in the interim assessment (Art. 35 PatA), but could be left undecided in view of the lack of novelty of the patent in suit.

For further details on the background of the case and the actual subject-matter at stake, please see the report from the main hearing on this Blog here.

The Supreme Court now had a second look at it:

The plainfiff’s appeal was all about whether or not the exchange of the novelty-destroying documents had been subject to implied confidentiality between ABB, Siemens and Stadler. Towards this end, the plaintiff had requested before the FPC that a witness be heard with respect to the (existence of a) development cooperation between ABB, Siemens and Stadler. However, the witness had not been heard. On appeal, the plaintiff alleged a violation of his right to be heard. The Supreme Court holds that even if a development cooperation had existed, this would not have been sufficient to conclude that an implied confidentiality had existed with respect to the relevant documents at stake.

Die Vorinstanz hat die von der Beschwerdeführerin behauptete Zusammenarbeit zwischen den Beschwerdegegnerinnen, Siemens und ABB im Ergebnis zutreffend als nicht hinreichend für den Schluss angesehen, dass die beanspruchte Lehre durch die Korrespondenz vom April/Mai 2003 (wegen vereinbarter Geheimhaltung) nicht neuheitsschädlich vorweggenommen ist.

The Supreme Court thus held that hearing of the witness would not have been of any legal relevance (BGE 133 III 295, r 7.1; 4A_607/2014, r 2.2; 4A_452/2013, r 3.1). Consequently, the plaintiff’s right to be heard was not violated by not hearing the witness (Art. 29(2) FC, Art. 8 CCArt. 152 CPC).

Reported by Martin WILMING


Case No. 4A_427/2016 (Supreme Court) ¦ Decision of 28 November 2016 ¦ “Patent; novelty-destroying publication”

Bombardier Transportation GmbH


(1)  Stadler Altenrhein AG
(2)  Stadler Bussnang AG
(3)  Stadler Rail AG

Composition of the Board of the Supreme Court:

  • Dr. Christina KISS
  • Dr. Kathrin KLETT
  • Dr. Fabienne HOHL

Court Clerk:

  • Dr. Christoph HURNI

Representative(s) of Plaintiff / Appellant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)

Representative(s) of Defendant:


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