No ex parte ‘shot from the hip’ in an assignment action

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

This decision provides very early insight into a litigation with an apparently rather complex setup. The plaintiff had initiated main proceedings on January 11, 2017, inter alia alleging co-ownership of two patent families currently held by the defendant. Only two days later, the plaintiff requested ex parte interim measures, i.e. that the defendant be ordered to preserve the status quo of the patent families in suit (with respect to ownership, licenses, etc.), and that a ban be noted in the Swiss patent register to prevent any changes to the Swiss part of the already granted European patent.

Allegedly, an employee of the Swiss plaintiff has largely contributed to the subject invention(s), in a joint development together with the CEO of the defendant (a company domiciled in Sweden). Two patent families are at stake, with an already granted European patent in the first family. EPO prosecution is still pending in the second family, while patents have already been granted in the U.S., Japan and Russia.

First, the President holds that the FPC only has territorial jurisdiction for the Swiss part of the European patent at stake; Art. 1(2) IPRA, Art. 31 LugC, Art. 10 lit. b IPRA. Note that the patentee / defendant is domiciled in Sweden! The request has thus not been considered at all as far as it concerned foreign patent rights.

What remains is the Swiss part of the already granted European patent. Swiss law is applicable in this respect; Art. 110(1) IPRA. In general terms, the requested injunction and the order to a register authority would be possible in accordance with Art. 262 lit. a and c CPC. However, the President held that the plaintiff failed to show the three necessary elements, i.e.

  1. that the employee of the plaintiff has contributed to or made this invention (what exactly, when, where and how);
  2. how the defendant has been made aware of this invention (or parts thereof); and
  3. how the subject-matter claimed by the defendant actually corresponds to this invention.

The plaintiff apparently did not discuss how the contribution of its employee is reflected in the claims; see item iii, above. Co-ownership was thus held to be not established for this reason alone.

Moreover, the President notes that the plaintiff failed to show an actual risk that any of the acts to be prohibited might materialize. The request also failed for this reason.

The routine exercise: Who are the parties?

Admittedly, that’s been a tricky puzzle this time. The decision is anonymized beyond recognition. Almost. We could spot a single perfect fit:

As to the first patent family, “WO 222” likely is WO 2011/042058 A1 and the European patent “EP 333” with 37 claims likely is EP 2 485 864 B1 (opposed by Trumpf Werkzeugmaschinen GmbH + Co. KG); see EPO Register and Swissreg for further details.

The second patent family is based on “WO 555” — which likely is WO 2012/136262 A1. This family has granted patents in Japan (JP 5828953 B2), Russia (RU 2 594 921 C2) and the U.S. (US 9,469,338 B2); examination of EP 2 694 241 A1 is still pending; see EPO Register.

The sole inventor of both patent families is Magnus Norberg Ohlsson, CEO of Tomologic AB, a company domiciled in Sweden.

Bystronic Laser AG likely is the counterparty. It had introduced a new online service ByOptimizer in November 2014, explicitly referring to a

[…] newly developed cluster technology from the Swedish company Tomologic. The patented technology […].

The former product page is currently offline (checked on Feb 2, 2017).

It’s only an educated guess — but wouldn’t it be an incredible coincidence if the rivals were not Bystronic Laser AG and Tomologic AB? Let’s wait and see …

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

n/a ./. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Simon HOLZER (MLL)
  • Esther BAUMGARTNER (MLL)
  • Martin TOLETI (Blum), assisting in patent matters

DECISION IN FULL

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