Shrinkage-proof sockets in pipes: Description ordered without prior notice of the defendant

Case No. S2013_008 ¦ Decision of 30 August 2013 ¦ “Superprovisorisch veranlasste Beschreibung respektive Beweissicherung”

The FPC granted an interim measure of a precise description / precautionary taking evidence without hearing the defendant. Indeed, this case seems to be a paradigm of a situation where an interim measure could gain no track otherwise.

1.  General technical background, problem and solution

The invention pertains to a method of making shrinkage-proof sockets on pipes made from polyolefin.

Plastic pipe with ring seat
Pipe with socket (HMS-Schnallinger)

Polyolefins have a crystalline structure and occur in the solid and liquid state. Upon heating, a part of the original molecules remain solid and the other part are liquefied so that a plastically deformable element is obtained, which can be shaped and deformed. The presence of those molecules which are not liquefied but remain solid gives rise to the so-called memory effect, which means that a shaped element made from a blank tends to return to its initial shape as soon as the molecules which have previously been liquefied and tend to maintain the shaped element in its current shape are heated or undergo a long-time shrinkage so that they permit the corresponding reverse deformation. The memory effect is regarded as the main cause of the shrinking of tubular plastic elements and sockets.

In simple terms, the patent-in-suit (see below) seeks to prevent such shrinkage essentially by use of a second memory effect in the opposite direction. For instance, the end of the tubular element is heated and expanded in known manner to form a socket having a diameter which is 0.5 to 5% in excess of the desired final diameter. Next, the resulting socket is cooled and is subsequently compacted to have a diameter which is smaller than the desired final diameter so that said socket when it has been released by the pressing tool will undergo a partial elastic expansion to have the desired final diameter.

2.  The patent-in-suit

The patent-in-suit is not identified in the decision, but from the claim wording it undoutedly is EP 666 790 B1 (patentee: Helfried Schnallinger). Apparently, the company HMS-Schnallinger manufactures pipes in accordance with a method of the patent-in-suit.

Centralized opposition proceedings at the EPO had been initiated by S.I.C.A in March 1998, but the opposition was withdrawn in October 1999 and opposition proceedings were terminated with maintenance of the patent as granted. See the European Patent Register for any further information in this respect.

The German part of EP 666 790 B1 has been subject to a nullity suit in Germany; cf. the decision 4 Ni 47/03 (EU) of the German Federal Patent Court and the second-instance decision of the Supreme Court, Xa ZR 84/05. The patent was upheld with a slightly amended wording, as follows:

Verfahren zum Herstellen von Formteilen aus im warmen Zustand formbaren Kunststoffen, insbesondere Polyolefinen, wie Polyethylen und Polypropylen, bei dem das Kunststoffmaterial auf bzw. über seine eine bleibende Verformung zulassende Verformungstemperatur erwärmt, in diesem Zustand zu dem Formteil geformt und anschließend unter diese Verformungstemperatur abgekühlt wird, dadurch gekennzeichnet, dass die Formteile im wenigstens auf die Verformungstemperatur erwärmten Zustand zu ein geringes Übermass gegenüber den gewünschten Endmassen aufweisenden Zwischenprodukten geformt und erst nach der Abkühlung unter die Verformungstemperatur in einem materialverdichtenden Pressvorgang auf die gewünschten Endabmessungen gebracht werden unter die gewünschten Endabmessungen gebracht werden, so dass sie nach dem Pressvorgang die gewünschten Endabmessungen aufweisen.

Or, (inofficially) translated based on the English translation of claim 1 of EP 666 790 B1:

A process for the production of mouldings from hot-mouldable plastics, more particularly polyolefins, such as Polyethylene and polypropylene, wherein the plastic material is heated to or above its deformation temperature which permits permanent deformation, is shaped into the moulding in that state, and then cooled below this deformation temperature, characterised in that the mouldings in the state in which they are heated at least to the deformation temperature are shaped into intermediate products which have a slight oversize compared with the required final dimensions, and are not brought to the required final dimensions under the required final dimensions in a material-compressing pressing operation until after cooling below the deformation temperature, such that they exhibit the required final dimensions after the pressing operation.

3.  The alleged infringement

From the decision, it can be concluded that the defendant had publicly offered a belling machine for sale that is operative at the premises of the defendant until end of 2013. However, the plaintiff could not readily establish whether the pipes produced / sold by the defendant are in fact produced by the method of the patent-in-suit. The pressing device needed for the final pressing step could be dismounted within less than one hour, with relative ease. This is why a prior information of the defendant could have baffled the gist of the interim measure.

4.  The decision

In preparation of the request for interim measures, the plaintiff had partially surrendered the patent-in-suit by filing a request to limit claim 1 to the same wording as upheld by the German Supreme Court (see above); Art. 24(1) lit. c PatA. The Federal Institute of Intellectual Property had confirmed that the requested limitation will be published on 30 September 2013. An indication of this limitation will then show up in Swissreg. The FPC thus held that the plaintiff had credibly shown allowability of the limitation of the claim.

Next, it is to be noted that the patent-in-suit lapses already in October 2013. No injunctive relief will thus be granted anymore, for time constraints. However, the FPC held that there is still a legitimate interest of the plaintiff in the requested interim measures, i.e. a declaratory judgment of infringement, as a basis for requesting damages / disgorgement of profits.

The plaintiff had requested the whole arsenal of interim measures available:

  • First, interim measure to secure evidence; Art. 77(1) lit. a PatA.
  • Second, interim measure of a precise description of the allegedly unlawful process; Art. 77(1) lit. b PatA.
  • Third, interim measure of precautionary taking of evidence; Art. 158(1) lit. b CPC.

In any case, the plaintiff had to establish that the evidence as such is at risk, that the evidence could be baffled or that a not easily reparable harm could be caused to the plaintiff (Art. 261(1) lit. b CPC). In view of the situation outlined above (Section 3), the FPC held that the plaintiff had credibly shown this and thus granted interim measures without prior hearing of the defendant.

Practical aspects of the interim measures were ordered essentially similar to S2012_007:

In order to safeguard trade secrets of the defendant which are of no relevance for the matter in suit, the FPC decided that the presence of the plaintiff at the occasion of the description is not permitted. However, the plaintiff’s lawyer and patent attorney were allowed to participate at the occasion of the description, in view of their obligations of confidentiality. Such obligation of confidentiality will only become moot for those aspects of the description which are finally made officially available to the plaintiff anyhow. For any further subject-matter they might get to know at the occasion of the description, their obligation of confidentiality persists. The FPC explicitly held that any violation of the obligation of confidentiality may be considered as disobedience against an official order (according to Art. 292 Federal Criminal Code) and would thus be punishable with fine.

Noteworthy, the plaintiff’s representative and/or patent attorney were obliged to bring all necessary measuring equipment and to assure that the respective measurements can be carried out properly. If necessary and requested in due course, an independent technician may accompany the plaintiff’s representative and/or patent attorney.

The description is to be prepared and printed out immediately at the premises of the defendant, shall be controlled for accuracy and completeness and is to be signed by the parties / their representatives. The defendant will later on be given an opportunity to blacken passages of the draft description in order to safeguard additional trade secrets, if any (in accordance with Art. 77(5) of the PatA). It is then up to the FPC to decide on the extent of the description for submission to the plaintiff, taking both parties’ legitimate interests into account.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_008 ¦ Decision of 30 August 2013 ¦ “Superprovisorisch veranlasste Beschreibung respektive Beweissicherung”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence; Art. 158 CPC
  • Preliminary measure to secure evidence; Art. 77 PatA
  • Preliminary measure of a precise description; Art. 77 PatA

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

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