Request for information and accounting granted in an action by stages

Case No. O2012_036 ¦ Partial decision of 13 February 2013 ¦ “Teilurteil Auskunft und Rechnungslegung nach abgegebener Unterlassungserklärung”

This case pertains to power plug adapters that allegedely infringe EP 1 393 417 B1. An essential feature is that various plugs can be slid out of a housing, but only one at a time; cf. Fig. 8 and 9 of the patent in suit (click to enlarge):

Figures 8 and 9 of <a href="http://www.patentlitigation.ch/wp-content/uploads/2013/02/EP1393417B1.pdf" target="_blank">EP 1 393 417 B1</a>

The plaintiff WorldConnect AG sells power plug adapters according to the patent in suit under the brand SKROSS®. The allegedly infringing power plug adapter is identified as “CH-685” in the decision, offered / sold by the defendant. An article with this identifier can still be found on the website pearl.ch, as well as the manual, but it is explicitly no longer available in Switzerland (click to enlarge):

CH-685 power plug adapter
CH-685 Travel Adapter
Source (visited February 27, 2013):
http://www.pearl.ch/ch-a-CH685-5452.shtml

The plaintiff confronted the defendant with the alleged infringement on July 1, 2011. On September 14, 2011, the defendant complied and submitted a cease and desist agreement. Moreover, the defendant provided some details on suppliers and quantities of received / sold items with letter of October 6, 2011. Finally, with letter of November 30, 2011 the defendant declared that 428 items had effectively been sold (after deduction of returns). The total turnover amounted to CHF 3’922,99. The defendant then paid the plaintiff a lump-sum of CHF 2’500,–, “in order to not end up in a law suit” (voilà, here we are …). An additional amount of CHF 5’346,– for incurred costs of an assisting patent attorney  was not compensated; in the defendant’s view, these costs could have been avoided by the plaintiff.

The plaintiff filed the suit on June 5, 2012 as an action by stages (Stufenklage), in accordance with Art. 85 CPC: Information and accounting for evidence was requested in first place, to enable the plaintiff to quantify the amount being requested in the main request, i.e. the recovery of profits of the defendant originating from illegitimate sales of infringing products. The duty of disclosure is based on Art. 66 lit. b of the Federal Act on Invention Patents (note that this duty is not only given vis-a-vis the court as the mere wording of Art. 66 lit. b of the Federal Act on Invention Patents might suggest, but also vis-a-vis the patentee; cf. Heinrich, PatG/EPÜ, 2nd ed., Bern 2010, para. 7).

The defendant submitted that the request for information and accounting was unfounded inasmuch as such information was already provided. Further information could only be provided on the basis of the electronic merchandise planning and control system. The defendant had offered that an independent accountant could review and approve the electronic data, but the plaintiff had not been responsive to this offer. In essence, the defendant alleged that the plaintiff’s request for information and accounting was now in bad faith, in view of the defendant’s prior offer.

In its decision, the FPC summarizes that neither the right of action of the plaintiff (as the exclusive licensee) nor the patent infringement as such was contested. It was not even contested that a profit had been made by the defendant; only the actual amount was in dispute. Thus, all prerequisites for the defendant’s duty of disclosure were given — which is an obligation to deliver (by the defendant), not an obligation to collect (by the plaintiff). Consequently, the defendant’s argument failed. Subsequent assessment of the disclosed documents is a matter of consideration of evidence by the court.

With respect to the extent of the duty of disclosure, the FPC stated that the disclosed information needs to put the plaintiff in a position to quantify the amount to be demanded in the main request. The defendant did not object in detail to the requests for information and accounting. The defendant only submitted that individual sales in the shop cannot be allocated to specific customers; this was acknowledged by the FPC. Moreover, the FPC corrected an obvious error in the request (“manufactured by” was replaced by “sold by”, since it was not alleged by the plaintiff that the defendant had manufactured the infringing items himself), and some redundancies were omitted.

The order on information and accounting was granted essentially as requested, with threat of punishment under Art. 292 Criminal Code (Art. 236(3) in conjunction with Art. 343(1) lit. a CPC). As an exception to the rule, a decision on the costs of this partial decision will be taken in the final decision.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_036 ¦ Partial decision of 13 February 2013 ¦ “Teilurteil Auskunft und Rechnungslegung nach abgegebener Unterlassungserklärung”

WorldConnect AG ./. Pearl Schweiz GmbH

Subject(s):

  • Patent infringement

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. rer. nat. Tobias BREMI (Referent)
  • Dr. iur. Mark SCHWEIZER
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Hans-Ulrich Pfeiffer (Pfeiffer Rechtsanwälte, Freiburg (Germany)), with mailing address at the defendant in Switzerland
Print Friendly, PDF & Email

3 Replies to “Request for information and accounting granted in an action by stages”

  1. Unfortunately, an error has occured in a prior version of this post. Obviously, the representative of the defendant does not have a mailing address at the premises of the plaintiff, but rather at the premises of the defendant. In the meantime, this has been corrected in the bibliography of the post.

Leave a Reply

Your email address will not be published.