Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”
The main hearing in this matter took place on 27 January 2016; see this Blog here for a report on the hearing and some background information on the subject-matter at stake.
Independent claim 1 of the patent in suit (EP 1 983 083 B1) reads as follows:
1. Method for applying flat pieces of material of any desired form onto an embroidery base (Fig. 6: 42) by means of an embroidery machine, wherein at least one material layer is arranged above the embroidery base (42) and, controlled by the program of the embroidery machine, a relative movement is produced between a cutting device (47) and the material layer (Fig. 6: 44), and, as a result, a flat piece of material of the desired form is cut out of the material layer (44), characterised in that the cutting is carried out by a heatable tip (47) and the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.
Yet another independent claim 7 of EP’083 is directed to the device as such and reads as follows:
7. Device for an embroidery machine, for applying flat pieces of material onto the embroidery base (42), for example figures made of another material (44) and/or of another colour than the material of the embroidery base, by embroidering in place, comprising a support (45) for securing the device to an embroidery machine, a heatable tip (47) for cutting the material layer (44) used for the application and means (57, 59) for bringing the heatable tip out of the inoperative position into the cutting position and vice-versa, characterised in that a spacer (55) is provided at the heatable tip (47), which is adjustable in order to determine the penetration depth of the tip (47) into the material layer (44), such that the tip only penetrates into the material layer (44) which is to be cut.
Already the interim assessment of the reporting judge had not been in favor of the defendant, neither concerning infringement nor with respect to the plea of nullity. That did not change anymore, the board of judges essentially followed this assessment.
1. Nullity
Lack of novelty was not an issue; only inventive step was under dispute. Some discussion apparently concerned the definition of the person skilled in the art. The FPC holds that the person skilled in the art is to be defined in view of the closest prior art that has been chosen — as is the case with the objective technical problem to be solved, too (r. 4.9.2).
The defendant inter alia argued that the patent lacked an inventive step over D1 (JP-A-05-261187). Translation of this document was problematic. I understand from the decision that the defendant apparently only filed a machine translation — at least in first place. While r. 4.3 holds that an ordinary translation has (only) been filed with the defendant’s comments on the interim assessment of the reporting judge, r. 4.9.3 holds that no ordinary translation has been filed at all. In any event, machine translation of patent documents in Japanese language is often confusing. D1 does not make an exception in this respect; the machine translations of the abstract and the specification of D1 that I have obtained from the JPO will give you an idea of just how puzzling such translations sometimes are.
In any event, D1 apparently concerns a sewing machine that also encompasses an embroidery function, incl. a heatable tip (4/5).
However, D1 does not further specify whether M (see figures) is only a frame or a solid table. Moreover, D1 neither discusses cutting of a mulit-layer material, nor any adjustment of the depth of penetration of the tip. The FPC held that the person skilled in the art would not have arrived at the claimed invention relying on D1 alone. Further, the FPC held that the person skilled in the art would not have consulted D2 (pertaining to a laser cutting system) — but even if D2 would have been considered, a spacer would still be missing.
Yet another document was considered in combination with D1. At least a kind-of-document, i.e. paragraph [0006] of the patent in suit. This paragraph [0006] of the patent reviews the prior art document DE 44 26 817 A1. The document as such has apparently not been introduced into the proceedings; paragraph [0006] of the patent is referred to as D4 in the decision. The decision casts some doubt on whether this paragraph [0006] of the patent itself can be considered as prior art. But even if it was considered, a spacer would still be missing.
The decision also discusses an alleged lack of an inventive step over D4 (reviewing DE 44 26 817 A1) as closest prior art. However, it was not held obvious (from D4 alone or in combination with D1) to replace a laser system with a heating tip and to further include a spacer. A further combination with US 3,902,042 (D3) did not succeed, either.
Finally, the defendant had submitted JP 82 43 776 A only belated, without any justification according to Art. 229 CPC for the late submission. The document has not been considered anymore.
In sum, the FPC held that the prior art on file did not prejudice validity of the patent in suit.
2. Infringement
The invention is all about a cutting technology in embroidery machines which relies on a heatable tip. This heatable tip (47) and a spacer (55) provided at the tip can be seen e.g. in Fig. 3 and Fig. 3a of the patent; see also paragraph [0017] of EP’083 for further details on the spacer.
A key issue in this case is whether the HeatCut fabric pressers are spacers (55) in the sense of the patent in suit. Let’s recall the HeatCut configuration:
The black tip in the middle of the picture is the heating tip. The silvery bars that are intermittently arranged on top of the fabric are so-called fabric pressers.
The FPC held that the claims do not require the spacer and the heatable tip to be provided on one an the same structural unit (this is only an embodiment according to Fig. 3/3a above, but not mandatory). According to claim 1, the spacer only has to be provided sufficiently close to the heatable tip to fulfil its function, i.e. to determine the penetration depth into the material layer:
[…] the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.
From the evidence on file, the FPC had no doubt that the fabric pressers are arranged exactly like that and for the very same purpose in the attacked embodiment; infringement of claim 1 was thus established.
Infringement of claim 7 was a bit more tricky. The plaintiff had argued in first place that the support (45) is not part of the claimed device. A prayer for relief including the support was only presented as an auxiliary request, and only this auxiliary request was finally allowed on the basis of the support identified in the illustration below.
The FPC clearly held that the support is part of the device as claimed and thus dismissed the higher-ranking request. This is also why the plaintiff got stuck with a share of 1/5 of the costs. But on the merits, the patent was held valid and infringed.
As to the cost, the FPC held that internal costs for patent attorneys employed with the group of companies of the defendant cannot be considered at all; these costs are not necessary expenses according to Art. 3 CostR-PatC.
Der von der Beklagten geltend gemachte patentanwaltliche Aufwand ist durch die Inanspruchnahme von konzern-internen Dienstleistungen entstanden und ist damit als interner Aufwand zu qualifizieren, für den unter dem Titel notwendige Auslagen kein Raum ist.
In addition to injunctive relief, the defendant has also been ordered to provide accounting on the infringing acts. This right is based on Art. 66 lit. b PatA. That’s always annoying for parties held to infringe. Here, the defendant had requested the court to take appropriate measures to ensure that its legitimate interests are not infringed, such as business secrets (Art. 156 CPC). However, the legitimate interest remained unspecified. In any event, the FPC now clearly held that the right based on Art. 66 lit. b PatA cannot be limited by procedural measures. Based on the information to be provided within 60 days after the decision has become final, the plaintiff will next have to quantify his claim; Art. 85(2) CPC.
Reported by Martin WILMING
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BIBLIOGRAPHY
Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”
Lässer AG Stickmaschinen ./. Saurer AG
Subject(s):
- Infringement / claim construction
- Spacer of embroidery machine
Composition of the Board of the FPC:
- Dr. Dieter BRÄNDLE
- Dr. Tobias BREMI
- Frank SCHNYDER
- André ROLAND
- Dr. Christian HILTI
Reporting judge:
- Dr. Tobias BREMI
Court Secretary:
- Susanne ANDERHALDEN
Representative(s) of claimant:
- Dr. Andri HESS (Homburger)
- Philip SCHNEIDER (SMS)
- Hans Rudolf GACHNANG (Gachnang), assisting in patent matters
Representative(s) of defendant:
- Dr. Stefan KOHLER (Vischer)
- Delia FEHR-BOSSHARD (Vischer)
- Arndt HAMANN (Saurer, inhouse), assisting in patent matters
- Bernhard RÜBER (Saurer, inhouse), assisting in patent matters
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FULL-TEXT
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The decision has been appealed to the Supreme Court.
Apparently, the appeal has been dismissed; see the note on the website of the FPC. The decision 4A.371/2016 is not yet published.