No split reply anymore?!

Case No. 4A_70/2019 (Supreme Court) |  Decision of 6 August 2019, on appeal against O2016_009  (FPC) | Decision of 18 December 2018 | ‘Durchflussmessfühler’

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I have reported about the first instance decision of the FPC on this Blog here.

Frankly, I did not see this coming:
With the present decision the Supreme Court quashes the FPC’s decision of 18 December 2018 in case O2016_009.

Do you remember the hn of that decision? Here it is again:

If in a patent infringement proceeding the plaintiff files before the instructional hearing a reply limited to the defense of the validity and no pleadings take place at the instructional hearing, the plaintiff may submit new allegations of fact, and therefore also amended patent claims, in the completed reply filed after the instructional hearing without having to meet the requirements of art. 229 para. 1 CPC.

Well, and now: Forget it! The Supreme Court turned the hn upside down, in no uncertain terms.

The FPC had held that there was no reason for a plaintiff bringing a claim for infringement to address nullity of his patent. The Supreme Court does not agree and holds that the plaintiff could well have addressed potential nullity arguments already in the statement of claim, even though he might not yet know the potential nullity arguments for sure at that time. Thus, the plaintiff in the case at hand actually had three chances to submits new facts and evidence before closure of the file, constrary to the meanwhile established case law of the Supreme Court; see e.g. BGE 144 III 117.

As if this was not enough, the Supreme Court apparently even has doubts as to whether a thematic split of the reply is admissible and sensible at all.

Ob eine thematische Aufteilung der Replik zulässig ist, erscheint fraglich ([…]). Es ist ausserdem zweifelhaft, ob eine derartige Vorgehensweise überhaupt sinnvoll ist, setzt sie doch mindestens voraus, dass sich die vorweggenommene Frage klar vom übrigen Prozessstoff abgrenzen lässt, was die Beschwerdegegnerin mit guten Gründen für die Frage der Patentnichtigkeit im Verhältnis zur Frage der Verletzung bestreitet.

Accordingly, the FPC’s recent note on Twitter mentioned that this decision puts the practice of a split reply in question:

In my perception, this puts more than just the split reply at question. The split reply was to ensure that the instructional hearing could efficiently be held after a first round of submissions by both parties on all aspects of the case, and to bring about a settlement; and the FPC has been pretty successful at this over the years. See e.g. the FPC’s Annual Report 2018 (p. 8):

The high ratio of cases settled is due to the practice of holding an instructional hearing at a relatively early stage of the procedure, during which a court delegation provides the parties with a preliminary legal and technical assessment of the dispute and tries to foster a settlement.

Apart from the split reply with the instructional hearing in between, I do not yet see a different way to bring the parties willingly at the table at an early point of time in the proceedings, to talk settlement.

Despite the potential impact on any future case at the FPC, it remains to be seen whether this win will actually carry the day for the defendant / appellant in the case at hand: The Supreme Court formally submitted the case back to the FPC to assess whether the submission of new claims by the plaintiff with the second reply was admissible under Art. 229(1) lit. b CPC (improper novum) — but it is already explicitly held in the decision that there is some indication that filing of these claims was occasioned by the defendant’s submission of a particular prior art document (¶2.5.3-2.5.4).

Reported by Martin WILMING


Case No. 4A_70/2019 (Supreme Court) |  Decision of 6 August 2019, on appeal against O2016_009  (FPC) | Decision of 18 December 2018 | ‘Durchflussmessfühler’

imtmedical AG (Appellant / Defendant)
Hamilton Medical AG (Respondent / Plaintiff)

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Appellant / Defendant:

Representative of Respondent / Plaintiff:


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CH 701 755 B1

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