Supreme Court endorses Comvik approach

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Case No. 4A_609/2019 (Supreme Court) | Decision of 16 July 2020 » on appeal against O2017_007 (FPC) | Decision of 1 November 2019 »

In first instance proceedings, the FPC held that some of imtmedical’s Bellavista ventilation machines with the ‘Animated Lung‘ feature infringe on Hamilton Medical’s EP 1 984 805 B1 »; see EPO Register and Swissreg for further bibliographic information. See this Blog here for a detailed review of the first instance decision.

The Supreme Court has dismissed imtmedical’s appeal, with decision of 16 July 2020.

As a quick reminder, the independent claim reads as follows:

Claim 1, broken down into features

The decisive features re novelty and inventive step are highlighted.

1A A device with a screen
1B in order on this to represent acquired, changing values with a mechanical ventilation of a patient,
1C with means for acquiring at least three changing values of different origin,
1D [a] and means for representing the values,
[b] which permit the acquired values to be qualitatively represented together on the screen
[c] in a single element
1E [a] said graphical element including
[b] a pictorial representation of a lung shape,
[c] a current design of the lung shape containing qualitative information on the compliance of the lung,
characterized in that
1F [a] the means for representing [the] values are designed such
[b] that a volume change of the ventilated lung which is acquired with each breath, is represented in an animated manner
[c] by way of a size change of the lung shape corresponding to this volume change,
[d] involving an animation of a contour line of the lung shape,
[e] the design of which containing qualitative information on the compliance of the lung.

Welcome to Switzerland, COMVIK(?)

Technicality as such was undoubtedly given; Art. 52 EPC. The Supreme Court endorses the EPO’s approach that the mere presence of at least one technical feature is sufficient. Anything else is to be dealt with under Art. 56 EPC in the case of mixed inventions, i.e. claims comprising technical and non-technical features.

As mentioned earlier, the IPI applies a different test. In my humble opinion, there is no room anymore for the IPI’s ‘holistic’ approach (‘Ganzheitsbetrachtung’) in the assessment of technicality of the claimed subject-matter: The FPC has explicitly committed to apply the EPO’s approach ( T 641/00 (Two identities / COMVIK)) not only for European patents but also for Swiss patents; and the Supreme Court applied the COMVIK approach without any hesitation at all. I cannot see how there could reasonably be two different approaches in place to assess one and the same issue, just depending on whether it is assessed during prosecution or in litigation.

imtmedical had argued that i) there was no improved assistance of a user of a ventilation machine; and ii) there was no plausible contribution to a solution of a technical problem at all.

However, the Supreme Court clearly holds that providing a (non-obvious) alternative solution is sufficient. It does not have to be an improved solution. What is more, the mere fact that a feature does not provide for an improved solution does not mean that it is non-technical; ¶ 10.3.1.

Next, the Supreme Court discussed the criteria mentioned in the EPO Guidelines for Examination, G-II 3.7:

A feature defining a presentation of information produces a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process (T 336/14 and T 1802/13).

Even though the FPC had not explicitly discussed whether or not the user is credibly assisted in performing a technical task, the Supreme Court holds that the FPC implicitly affirmed this by mentioning that no improvement is necessary; see above. Rightly so; the Supreme Court again referred to the EPO Guidelines for Examination, G-II 3.7:

Such a technical effect is considered credibly achieved if the assistance to the user in performing the technical task is objectively, reliably and causally linked to the feature.

The question is whether it can be assumed that it is useful for medical staff to be able to see the change in volume of the lung being ventilated and the ventilation rate, so that artificial ventilation can be adjusted to suit the patient. The Supreme Court holds that this is undoubtedly the result of the natural anatomical context, just as every user knows the ventilation process and its effects on the patient; ¶ 10.3.2.

Beware of ‘sneak attacks’

Interestingly, at a very early stage of the proceedings the FPC’s delegation at the instruction hearing had apparently indicated that the patentee / plaintiff would have to prove the alleged improvement in the user’s information processing, with suitable pieces of evidence.

Beware of ‘sneak attacks’

imtmedical argued that it was a ‘sneak attack’ (Überraschungsschlag) by the FPC to abstain from this preliminary opinion in the final judgment without further notice, and that this constituted a violation of the right to be heard; ¶ 10.3.3.

The Supreme Court did not buy into that: The interim assessment of the judge-rapporteur at the instruction hearing is non-binding. Moreover, the parties have no constitutional right to be specifically heard on the legal assessment of the facts introduced by them in the proceedings.

imtmedical also asserted a violation of the right to be heard in view of the reformulation of the objective technical problem by the FPC. Indeed, the FPC had reformulated the objective technical problem to a less ambitious one, i.e. to provide for an alternative, without further explanation. The Supreme Court notes that the FPC evidently did so in full conformance with the EPO’s problem-solution approach; ¶ 11.4.2. In any event, the Supreme Court holds that the formulation of the ‘objective technical problem’ is not a factual submission in strict sense:

Likewise, the Supreme Court had no issues with the FPC’s assessment of obviousness and sufficiency of disclosure; ¶ 11.5 and 12, respectively. Further, the witness had not to be heard because the FPC did not actually make use of the piece of evidence offered by Hamilton that the witness had been offered to counter.

Now that the partial decision on infringement is final, it remains to be seen how this litigation continues when imtmedical has provided the information and accounting, as ordered.

Reported by Martin WILMING


Case No. 4A_609/2019 (Supreme Court) | Decision of 16 July 2020 » on appeal against O2017_007 (FPC) | Decision of 1 November 2019 »

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

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellant / Defendant:

Representative(s) of Respondent / Plaintiff:

→ on appeal against FPC decision O2017_007 »
Case no.: 4A_609/2020
Decision of: 16 July 2020

→ partial decision, EP(CH) 1 984 805 B1 » is valid and infringed
Case no.: O2017_007
Decision of: 1 November 2019



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