Claim dismissed, counterclaim dismissed: Huge expense, no recompense

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

The FPC handed down the decision in this remarkable litigation about a highly complex mechanical writing system. Please see this Blog here for a report about the main hearing and some background information.

What follows is a rather lengthy post, but this is due to the complexity of the case, both procedurally and technically.

  1. Party positions in a nutshell

It started off with Guenat‘s request that Swiss Finest‘s CH 704 790 B1 be declared invalid; note that the patent has been limited in March 2017 and re-published as CH 704 790 C1, see Swissreg for further bibliographic details. Guenat argued that the invention had been made by Frédéric Garinaud, an independent inventor who is quite renown for being the mastermind behind the Harry Winston Opus 8. Frédéric Garinaud had filed a patent application for a writing instrument; this patent application has then been assigned to Guenat and a patent was granted; EP 2 479 648 B1, see Swissreg and European Patent Register for further bibliographic details.

In Guenat’s view, the subject-matter of the Swiss Patent was invented by Frédéric Garinaud before it was used by Swiss Finest, and Frédéric Garinaud never transferred his patent rights to Swiss Finest. Guenat further argued that the invention of the Swiss Patent is obvious in view of a PowerPoint Presentation which had been sent to a third party without confidentiality obligation. Frédéric Garinaud being the only creator of the technical teachings contained in Garinaud’s European Patent and having transferred his patent rights to the plaintiff, Guenat argues that the defendant has no right to the Swiss Patent.

Swiss Finest countersued and requested that Guenat’s EP’648 be declared invalid, or assigned to Swiss Finest. Swiss Finest argued that in autumn 2010, Frédéric Garinaud had only a vague idea but had not yet completed an invention at that time. The invention was only made later with the substantial contribution of Swiss Finest’s employees after Frédéric Garinaud’s appointment as Creative Director, and any rights in the invention had been assigned to the defendant by employment contract.

Later, Swiss Finest argued that if Frédéric Garinaud was nevertheless considered to have already conceived the invention in the fall of 2010, the patent rights in this invention had been transferred to a simple partnership founded by Fabrice Thueler (owner of Swiss Finest) and Frédéric Garinaud in the preparation of a company ‘Garinaud SA’ which was foreseen to exploit the invention in dispute. Swiss Finest held thus to be the legitimate owner of the rights in the invention which is the subject of the Swiss Patent and, since the invention of the European Patent is the same, it is also entitled to the European Patent. Further, the subject-matter of the Swiss Patent was new and inventive in Swiss Finest’s view, since the PowerPoint presentation had not become publicly available because it had been sent only under an implicit confidentiality obligation. Even if one were to consider that the presentation was to be considered as prior art, the subject-matter of the Swiss patent is nonetheless inventive.

As if all this was not confusing enough, the case was spiced up further with Swiss Finest’s counterclaim for infringement by the Mechanical Fountain Pen RMS05:

Fountain Pen RMS05 by Richard Mille

This product has some amazing mechanics; see yourself:

In brief:

It’s complicated. Very complicated.

  1. The parties’ requests — and why they failed

The stage is set with a rather complicated factual situation. But at least some of the request could be dealt with quite straight forward by the court:

  1. Nullity for lack of entitlement

Guenat had requested that Swiss Finest’s Swiss patent be annulled based on Art. 26(1) lit. d PatA, i.e. for lack of entitlement. However, such request can only be brought by the entitled person; Art. 28 PatA. Guenat alleged that Frédéric Garinaud transferred ‘full and complete ownership’ of the European patent application to Guenat. Even though the inventions in both (Guenat’s) European and (Swiss Finest’s) Swiss patent may well be the same, this did not help. Frédéric Garinaud specifically assigned only the European patent application to Guenat, but not to the invention itself.

Guenat’s request for declaration of nullity based on Art. 26(1) lit. d PatA was thus held inadmissible for lack of standing.

  1. Nullity for lack of inventive step

Novelty of Swiss Finest’s Swiss patent after partial surrender was not contested anymore. But Guenat alleged obviousness over the PowerPoint presentation that had been sent to Hamdi Chatti of Louis Vuitton in 2010, in further view of i) F. Lecoultre, Les Montres Compliquées, 3ème éd. Neuchâtel 1985; ii) Huguenin / Guye / Gauchat, Les Echappements, 2ème éd. Neuchâtel 1974; and/or EP 1 221 383 A1.

Louis Vuitton logo

With respect to the PowerPoint presentation, the parties dissented whether or not it had been sent to Hamdi Chatti with an implied confidentiality obligation. The last page of the PowerPoint presentation mentioned ‘breveté’ (‘patented’), even though the Swiss patent application had not yet been filed. Frédéric Garinaud was apparently aware of this faux-pas; he wrote to his patent attorney:

I confess I anticipated the patent application.

The decision holds that under the specific circumstances there was no implicit confidentiality obligation associated with the PowerPoint presentation.

It then remained undisputed that the PowerPoint presentation was the closest prior art. However, quite a lot of differentiating features were missing. The missing features could be grouped into three aspects, and three partial problems are dealt with in the decision:

amovibilité the removable endpiece allows wide access to the pen holder, and indirectly to the other components housed in the front part of the writing instrument, avoiding manipulation by the writing tip;
échappement the choice of an escapement as a control mechanism offering a simple and proven solution to control energy release, while producing an audible indication;
verrouillage cooperation between the actuator and the locking system to unlock the power source to release the writing tip when the actuator is actuated, without additional action.

This is the only picture from the PowerPoint presentation in the decision:

PowerPoint presentation

As to the locking system (‘verrouillage‘), the decision holds that this was readily obvious (if not implicitly disclosed already in the PowerPoint presentation). Likewise, the escapement (‘échappement‘) is held obvious in further view of Lecoultre:

Lecoultre, p. 113

However, the removable endpiece (‘amovibilité‘) was more tricky, and the decision holds that this was not obvious from the cited prior art. When seeking a solution to the problem of replacing the ink cartridge, the skilled person would not have thought of a removable endpiece. Instead, he would have e.g. made a pen in which the writing tip as such is detachably mounted on the body or tip, like e.g. in EP'383:

EP 1 221 383 A1, Fig. 1

Thus, the subject-matter claimed in Swiss Finest’s Swiss patent was held to be non-obvious over the cited prior art.

  1. Nullity for yet further reasons

Guenat argued for nullity of Swiss Finest’s Swiss patent for yet further reasons.

First, an alleged undue extension of subject-matter (Art. 26(1) lit. c PatA) in the course of the partial surrender according to Art. 24 PatA; see the B1 and the C1 version of the Swiss patent below.

Second, Guenat alleged a lack of enabling disclosure; Art. 26(1) lit. b PatA.

Without setting out all the details here, both these alleged grounds of nullity failed for apparently straight forward reasons.

  1. Entitlement to Guenat’s European patent

The invention disclosed in the European Patent was already disclosed or was obvious to a large extent from the PowerPoint Presentation prepared and sent by Mr. Garinaud on November 17, 2010; see above — with the only exception of the removable endpiece. This removable endpiece was first mentioned by Frédéric Garinaud’s patent attorney François-Régis Richard (e-patent). In an email dated December 9, 2010, he wrote to Frédéric Garinaud:

I am also realizing that for the change of the cartridge, it would probably be simpler to disassemble the pen by its front part to avoid exposing the watch mechanism in the back.

This undisputedly was the first note of the removable endpiece. Whether the rights to this creative contribution were transferred to Frédéric Garinaud, as alleged by Guenat, could remain open. In any event, it had not been alleged that François-Régis Richard transferred the rights to Swiss Finest. Rather, Swiss Finest only held that the invention was made by Frédéric Garinaud when he was employed at Swiss Finest — which could not be true given the PowerPoint presentation and the email of December 9, 2010.

The decision thus holds that the subject-matter of claim 1 of the Swiss patent was created by Frédéric Garinaud before its use by Swiss Finest — with the exception of the removable endpiece which was proposed by François-Régis Richard without having assigned his rights in this contribution to the defendant.

In anticipation of this outcome, Swiss Finest apparently modified its position later and alleged that it had obtained rights in the European Patent by virtue of a simple partnership agreed between Frédéric Garinaud and Fabrice Thueler in preparation of a company ‘Garinaud SA’ to be established.

However, this was not convincing, either. The decision holds that it is unclear how the right to the patent, even if it had been transferred to the simple partnership, should finally reside with Swiss Finest. Members of a simple partnership are joint owners of the assets, with the consequence that they can only dispose of them jointly. In any event, according to the defendant’s allegations, Frédéric Garinaud and Fabrice Thueler were the partners of the simple partnership. A patent right could therefore only belong to them jointly. However, the defendant did not allege that Frédéric Garinaud agreed to transfer the right to the patent to it.

  1. Injunctive relief

Swiss Finest’s request for injunctive relief in respect of the ‘Mechanical Fountain Pen RMS05’ failed for a lack of concreteness of the attacked embodiment. See e.g. this Blog here (O2012_004, ‘Leichtbeton’) for further information on the necessary concreteness of a request for injunctive relief.

Swiss Finest did not argue for literal infringement, but rather only for infringement under the Doctrine of Equivalents (DoE); see below. Still, the request for injunctive relief merely recited the wording of the claims, and was thus held inadmissible.

  1. Infringement by the Mechanical Fountain Pen RMS05
RMS05 (annotated)

Even though the request for injunctive relief was held inadmissible, the court still dealt with had to assess whether or not the RMS05 was infringing. Confused? I will clarify this later; see below.

It was undisputed that the RMS05 did not comprise a removable endpiece (’embout amovible’). However, Swiss Finest alleged that the function of the removable endpiece is to allow the writing tip to be removed from the pen body to allow an ink cartridge to be inserted or replaced. Swiss Finest further alleged that the fountain pen holder (indicated by the white arrow in the annotated figure) can be unscrewed and removed from the body using a wrench formed in the cap of the pen to place and replace an ink cartridge. In Swiss Finest’s view, the removable fountain pen holder inserted into the endpiece of the RMS05 amounts to an infringement under the DoE.

First, the court carefully defined the function of the removable endpiece in the context of the invention and reverted to ¶ [0015] of the Swiss patent:

It can still be noted that, to have access to the pen holder, the endpiece is screwed on the body and can therefore be unscrewed. The ink supply can then be changed by disassembling the pen holder and the intermediate holder.

The decision holds that this function does not exist in the RMS05. The endpiece is not removable and the disadvantage of the access to the fountain pen holder still remains in the RMS05. The fact that the fountain pen holder of the attacked embodiment can be removed does not change anything in this respect, because according to the Swiss Patent, after unscrewing the endpiece and facilitating access, the fountain pen holder is also removed to replace the cartridge.

As can be seen in the below screenshot of this video on YouTube, the fountain pen holder can be gripped with the cap and removed to replace the ink cartridge. However, the endpiece is fixed (indicated by the white arrow in the screenshot below).

RMS05, replacement of ink cartridge

Therefore, there is no removable endpiece in the RMS05, neither literally nor under the DoE, because the function of the removable endpiece is not realized in this pen. Thus, already the first question of the questionnaire established with O2014_002 was denied.

In sum, neither party succeeded with any attack. This somehow reminds me of the ‘Hornberg salute’:

‘Hornberger Schiessen’
  1. What the decision might be cited for
  1. Competency for assignment of all national validations of a European patent

Swiss Finest had requested that Guenat’s European patent be assigned to them. This was interpreted by the court as to concern all national validations of the meanwhile granted patent. To the best of my knowledge, it had been mentioned for the first time in O2015_009, ¶ 2.1, that the FPC is competent to decide also on ownership of foreign rights — without any in-depth discussion because it had not been decisive anymore in that case.

Not so here. The court now took the chance to set out its reasoning in any detail in ¶ 10 of the decision. The question of ownership of IP rights does not fall within the exclusive jurisdiction under Art. 22(4) of the Lugano Convention; see decision C-288/82 of the ECJ, Ferdinand M.J.J. Duijnstee ./. Ludowijk Goderbauer and further literature in fn 1 of the decision. Under Swiss national law, international jurisdiction for disputes relating to intellectual property rights is governed by Art. 109 CPIL. However, only validity and infringement actions are mentioned, but not assignment actions. Jurisdiction for actions for the assignment of an IP right, in particular a patent, is therefore determined in accordance with the general rule of Art. 2 CPIL, according to which the Swiss judicial or administrative authorities of the defendant’s domicile are competent. As the plaintiff (defendant of the counterclaim) is domiciled in Switzerland, the FPC is also competent for counterclaims relating to the transfer of foreign patents.

  1. Right to accounting

The court re-visited the right to accounting based on Art. 66 lit. b PatA in view of critical voices in the aftermath of O2013_008; see ¶ 58 of the decision (note that fn 33 erroneously refers to O2012_008). However, the decision explicitly confirms the FPC’s practice that in case the court finds infringement there is a substantive entitlement to information and accounting based on Art. 66 lit. b PatA.

  1. Request for accounting with reference to a trademark / product name

As mentioned above, the request for injunctive relief was held inadmissible for lack of concreteness. Still, the court did the whole exercise of infringement analysis. It had to because of the request for accounting. The request for accounting referred to the ‘Mechanical Fountain Pen RMS05’. Such a description would be perfectly inadmissible in a request for injunctive relief, because the product name could be changed at any time. But not so in a request for accounting. The name of a product that has been sold in the past cannot be changed anymore:

However, in the case of conduct that has taken place in the past, it is permissible to specify the allegedly infringing object by means of a type designation or trademark. Such a designation cannot be changed for the past and one therefore knows exactly which product — namely in this case the product previously offered under the designation ‘Mechanical Fountain Pen RMS05’ — is the subject of the information request.

I guess we will see more such simplified requests for accounting in the future.

  1. No mixing-up of functions of features in the test for infringement under the DoE

There is an interesting general remark in ¶ 63 of the decision, i.e.:

One cannot reasonably expand the function of a claim feature and argue that this expanded function is fulfilled by another feature of the attacked embodiment, when the same element (penholder) with the same functionality (can be dismantled to replace the cartridge) is found in the invoked patent in parallel to claimed features, and independently of it (removable endpiece).

Reported by Martin WILMING

IMAGE CREDIT

Header image (Hôtel de Ville de Neuchâtel, Salle du Conseil Général) courtesy of Lucas Vuitel – ArcInfo.

BIBLIOGRAPHY

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine
./.
Swiss Finest SA

Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Philippe DUCOR
  • Christoph MÜLLER
  • Dr. Ralph SCHLOSSER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Nathalie TISSOT (Etude Tissot)
  • Christophe SAAM (P&TS), assisting in patent matters

Representative(s) of Defendant:

  • Christoph KÜNZI (CBK)
  • Tarik KAPIC (Bovard), assisting in patent matters

DECISION IN FULL

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CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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FRÉDÉRIC GARINAUD

Harry Winston Opus 8

Frédéric Garinaud apparently is a master of complicated mechanics. He developed the Harry Winston Opus 8, a manually-wound watch with a ‘digital’ display of the hours and minutes.

The numbers appear only on demand, when a slide on the right side of the watch is activated. I could not help but do some further research on the Opus 8. It was a limited edition of 50 pieces only, on 9 July 2018 seen at luxurybazaar.com with a price tag of US$ 350’125,–. A somewhat fair deal in view of a purported retail price of US$ 449’700,–.

www.luxurybazaar.com; July 9, 2018

Get to know Mr Garinaud in this video, talking about the Opus 8:

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Nordson ./. GEMA: Claim construction and patentability — which court has it right?

Case No. O2013_008 ¦ Decision of 25 August 2015 ¦ “Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage)”

 

HEADNOTE

Art. 66(2) lit. b PatA:
Based on Art. 66(2) lit. b PatA in case the court finds infringement there is a substantive entitlement to information and accounting.

[Reference to al. 2 of Art. 66 PatA in the headnote might be misleading; there is no formal al. (2) in Art. 66 PatA. This is marked-up / corrected in the quotation above.]

 

1.  Background of the case

The main hearing in this infringement case has taken place on 15 June 2015; see this Blog here. The patent in suit is EP 899 016 B1 of Nordson Corp.; see Swissreg for further bibliographic details. It pertains to a spray gun for powder coatings like the one shown in Fig. 2:

Fig. 2 of EP 899 016 B1
Fig. 2 of EP 899 016 B1

The only independent claim 1 as granted reads as follows (structured according to the feature analysis recited in the decision):

O1: An apparatus (20) for use in applying coating material to an object

O2: comprising a spray gun (24) having

O3: a handle portion (26),

O4: an extension portion (28)

O5: which is connected with the handle portion (26),

O6: a nozzle (42)

O7: connected with the extension portion (28),

O8: an electrode (46) disposed adjacent to the nozzle (42)

O10: and away from which electrostatically charged coating material flows toward the object,

O11: a coating material flow control member (74)

O12: connected with the handle portion (26) and

O13: manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object,

characterised in that

K14: the spray gun (24) also has a purge air flow control member (110)

K15: connected with the handle portion (26) and

K16: which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).

2.  What’s it all about?

The plaintiff markets a product according to the patent under the tradename Encore®; see the so-called PowerPurge trigger on the handle in the snapshot below:

power_purgeThe defendant is GEMA Switzerland GmbH. Defendant’s attacked product is the OptiFlex 2 GM03 gun:

optiflex2_product_figure

The attacked embodiment is further specified in the wording of the judgement with three functional illustrations, as follows (with corresponding annotations in English):

As can be seen in the above illustrations, the attacked embodiment has only one trigger (17) at the front of the handle (the Encore® gun has two triggers there; see above illustration). In normal operation, trigger (17) of the attaecked embodiment triggers the powder flow. By means of the key T3 on the backside remote control of the gun, functionality of the trigger (17) can be switched to activate / stop the rinsing process. The Encore® gun does not have such a dual functionality of one and the same trigger, but rather has separate triggers for powder and purge air.

3.  Claim construction and infringement

Essentially, only three claim features were under dispute with respect to claim construction and infringement.

3.1  Are control members (74) and (110) separate elements or not?

The claim requires a coating material flow control member (74); see feature O11. Feature K14 of the claim further requires that (emphasis added)

the spray gun (24) also has a purge air flow control member (110).

Parties dissented on the question of whether or not the material flow control member (74) and the purge air flow control member (110) are to be distinct elements or whether they could both be embodied by one and the same element. Evidently, in the Encore® gun and in the specific embodiments of the patent, these elements are distinct.

The FPC held that both elements may well be realized according to the patent by one and the same element having two functionalities. It is emphasized that embodiments may not be relied on in order to construe the claim in a more limited way than the claims demand for. The general specification and the claims do not mandatorily require that both elements are distinct. The attacked embodiment was thus held to realise feature K14.

But what about the “also” in K14, you ask? Interesting point. Note that the Dusseldorf Regional Court had come to a different conclusion; see decision 4b O 25/13. The Dusseldorf court relied on the German term “ausserdem” (see the German version of claim 1 of EP 899 016 B1). The term used in the (original) English language of the patent is “also”, and the FPC thus exclusively relied on the term “also” (in the sense of “auch”).

3.2  What does connected with the handle portion (26) actually mean?

Feature K15 requires that the purge air flow control member (110) be connected with the handle portion (26). The FPC held that this wording even allows for an indirect connection of purge air flow control member and handle portion.

One-handed operation
One-handed operation

In a function-oriented construction of this feature, the FPC concluded that the connection has to allow for the purge air flow control member being reachable by a user holding the gun at the handle portion. Thus, the purge air flow control member has to be arranged such that a one-handed operation of the gun is enabled.

From an illustration in marketing material of the defendant, it is evident that this functionality is realised by the attacked embodiment.

3.3  And what is the meaning of to initiate a flow of air?

Feature K16 requires that the purge air flow control member (110) be manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24). It was a matter of dispute whether this covers embodiments where (i) a flow is only initiated if the purge functionality has been unlocked beforehand (by means of another key); or (ii) the flow is not initiated directly, but rather only indirectly by a downstream controller in response to a keystroke on the purge air flow control member. Both situations were held to be covered by this claim feature, and the attacked embodiment was thus held to realise feature K16.

4.  Patentability

The defendant had argued for nullity as a plea in defense. Allegedly, the claimed subject-matter was not novel over D1. However, D1 is silent about the actual location of the purge air flow control element. The FPC thus held that novelty was given, in line with a decision of the Federal Patent Court of Germany in parallel proceedings (see below). Note that D1 is recited as prior art in the patent in suit (see para. [0001] of EP 899 016 B1) and had already been considered during EPO prosecution).

Defendant also argued that the claimed subject-matter was not novel over D2. This gun has a trigger (36) that allows for a flow of air to be directed through channels (51) to the nozzle.

However, there is no flow of air through the powder path, as essentially required by feature K16. Air in D2 is used to generate a swirl into which the powder is then supplied; the purpose is thus a different one compared to the purge air of the patent in suit. Note that there is disclosure of purge air for the supply channel of the powder in D2, but this one is being operated manually by a valve on a separate control panel (11) on the powder pump, i.e. not on the gun itself. Novelty over D2 was thus acknowledged, too. Again, this is in line with the decision of the Federal Patent Court of Germany in parallel proceedings (see below).

Defendant further alleged a lack of inventive step over D1 in further view of the knowledge of the person of skill in the art, exemplified by D3, D4, D5, D6. Apparently, only the argumentation with respect to the combination with D3 had been elaborated in detail. It was beyond dispute that D1 can reasonably be considered as the closest prior art. As mentioned above, D1 is silent about the actual location of the purge air flow control element. From D1 alone, it cannot be concluded that a location for such a control element on the handle was obvious. Other locations such as illustrated in D2 would also be reasonable. Moreover, a foot pedal, clocked or sensory air pulses, or a control element to be used with the other (free) hand of the operator could be envisaged. Thus, the FPC concluded that D1 in further view of the knowledge of the person of skill in the art does not render the claimed subject-matter obvious. This is where the Federal Patent Court of Germany explicitly concluded differently:

Ein derart häufig und darüber hinaus auch noch leicht zu aktivierender Spülluftstrom vermittelt dem Fachmann jedoch, dass das Spülluftstromregelungselement in seiner unmittelbaren Nähe positioniert sein muss und demzufolge nicht entfernt von der Spritzpistole platziert sein kann, da er die Steuerung der Spülluft zudem individuell und somit manuell vornehmen wird. Da die D1 selbst keine Angaben macht, wo ein derartiges Regelungselement angebracht ist, positioniert der Fachmann dieses in unmittelbarer Nähe des Bedieners, wobei die Spritzpistole selbst als Ort der Positionierung am nächstliegenden erscheint.

The FPC held that the German court erred and had based its conclusion on an undue ex-post-facto analysis: D1 is silent about a location in close proximity, and a remote location is not indictated as disadvantageous. Moreover, not even a manual operation / initiation is mentioned in D1. Finally, the combination of D1 with D3 failed mainly because D3 does not concern a powder spray gun, but rather a hydraulic spray gun for liquid substances. Again, the German Federal Patent Court concluded differently. However, the German court obviously relied on a further document D30 (see p. 22, last paragraph) in addition to D3, but this document was not put on file in the Swiss proceedings, for whatever reason.

Further prior art documents D4, D5 and D6 relate to applicators for more-component reactive compositions instead of powder coatings. The  FPC thus held that the person skilled in the art would not even consider these documents.

5.  Legal aspects and costs

5.1  Plea of free prior art

Defendant also presented a plea of free prior art, interpreted by the FPC as a plea for nullity. However, patentability over the cited prior art was acknowledged; see above. The FPC held that a plea of free prior art could only be considered if an infringement under the doctrine of equivalents were at stake. In case of a literal infringement, this plea is pointless:

Die Einrede des freien Stands der Technik könnte ohnehin nur zum Zug kommen, wenn nicht eine wortsinngemässe Patentverletzung, sondern Äquivalenz zu beurteilen ist.

5.2  Substantive entitlement to information and accounting

This is what the headnote is all about. As outlined above, validity and infringment of the patent had been established, but the plaintiff had not provided further reasoning or evidence with respect to the financial compensation sought for in this action by stages. In a nutshell, the defendant argued that only the quantification is deferred to the second stage of the proceedings, but not the whole burden of proof as to the further legal requirements for financial compensation. For instance, the plaintiff had not presented any allegations as to the bad faith of the defendant — a requirement for recovery of defendant’s profits. With respect to damages for lost profits, the plaintiff had neither argued nor substantiated that he makes any profits with products according to the patent.

The FPC held that the defendant’s substantive duty of disclosure and accounting is directly based on Art. 66 lit. b PatA since an infringement had been established. At the first stage of the proceedings, the plaintiff is not obliged to establish the further legal requirements for recovery of defendant’s profits, or damages.

5.3  Costs

The value in dispute was CHF 2.6 m, and the parties apparently put an enormeous effort into it. Compensation for legal representation in the amount of CHF 80’000,– was awarded to the plaintiff, according to Art. 3 ff. CostR-PatC. Noteworthy, costs awarded for the patent attorney were even higher, i.e. CHF 114’185,64.

6.  Parallel decisions in Germany

With decision of April 29, 2015  the German Federal Patent Court had maintained the patent only in a more limited extent, i.e. as follows (marked-up; see 4 Ni 26/13 for details):

An apparatus (20) for use in applying powder coating material to an object comprising a spray gun (24) having a handle portion (26), an extension portion (28) which is connected with the handle portion (26), a nozzle (42) connected with the extension portion (28), an electrode (46) disposed adjacent to the nozzle (42) and away from which electrostatically charged coating material flows toward the object, a coating material flow control member (74) connected with the handle portion (26) and manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object, characterised in that and a coating material passage (62) in said extension portion (28), characterised in that the apparatus has a valve (94), a conduit (98) and a controller (70) which, simultaneously with opening of a valve (54) and closing of a switch (78), operates the valve (94) to an open condition to enable electrode wash air under pressure from a source (96) of electrode wash air to flow through the conduit (98) to the handle portion (26) and from the handle portion (26) of the spray gun (24) through the extension portion (28) of the spray gun (24), the spray gun (24) also has a purge air flow control member (110) connected with the handle portion (26) and which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).

These amendments in the German proceedings were not based on dependent claims; the added features were taken from the description. 

In infringement proceedings, the Düsseldorf Regional court decided for non-infringement of the patent as granted, neither literally nor under the doctrine of equivalents; see decision 4b O 25/13.

What’s next?

The decision has been appealed to the Supreme Court. A decision can be expected by mid 2016.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2013_008 ¦ Decision of 25 August 2015 ¦ “Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage)”

Nordson Corporation ./. GEMA Switzerland GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Herbert LÄDERACH
  • Christoph MÜLLER
  • Dr. Simon HOLZER

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

  • Dr. Christian HILTI (Rentsch)
  • Dr. Jens OTTOW (Rentsch), assisting in patent matters

Representative(s) of Defendant:

— DECISION IN FULL —

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Protection of potential trade secrets in an action by stages

Case No. O2012_033 ¦ Decision of 02 June 2015 ¦ “Action échelonnée: obligation de fournir des renseignements; possibilité de sauvegarder des secrets d’affaires”

De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)
De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)

Déjà-vu, you think? Indeed, this procedural decision is a follow-up on a decision of 30 January 2014 (commented in any detail here). In brief, certain De Grisogono watches were held to infringe a patent of Richemont, and injunctive relief had thus been granted. This decision had been appealed by De Grisogono, but the Supreme Court had rejected the appeal with decision of 02 October 2014; see 4A_142/2014.

In consequence, the second aspect of Richemont’s action by stages came into play, i.e. De Grisogono had to open the books in order to enable the plaintiff to quantify the damages. According the the decision of 30 January 2014, this had to be done within 60 days after the decision has become final, i.e. until 02 December 2014. After a series of term extensions and incomplete production of documents, the defendant finally – belatedly, without any justification – submitted a DVD-ROM with invoices pertaining to the infringing watches on 07 May 2015. The decision leaves no doubt about the court’s discontentment, for both the delay as such and the documents that have been produced. Apparently, the documentation on the DVD-ROM is not self-explanatory. The defendant was thus obliged to again organize and index the documents in an understandable manner.

Further, the defendant referred to Art. 156 CPC and requested that appropriate measures be taken by the court to ensure that business secrets are protected. In particular, it was requested that the DVD-ROM shall not be made available to the plaintiff. This was a non-starter: The production of documents is only the execution of a partial judgement that has become final. Any such request could (and should) have been made before the judgement had been taken.

At least one ray of hope on the horizon for the defendant: The FPC noted that the documentation on the DVD-ROM contains data not only with respect to the watches at stake, but rather also contains information with respect to jewelry, etc. The defendant was given a final opportunity (with a non-extendable deadline) to accordingly redact the respective documents in order to not disclose these unrelated information to the plaintiff. The FPC notes that if the defendant fails to provide such documents, the plaintiff will be served with the unredacted documents contained on the DVD-ROM that is already on file.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2012_033 ¦ Decision of 02 June 2015 ¦ “Action échelonnée: obligation de fournir des renseignements; possibilité de sauvegarder des secrets d’affaires”

Richemont International S.A.
./.
De Grisogono S.A.

Subject(s):

  • Infringement
  • Nullity

Board of Judges:

  • Dr. Dieter BRÄNDLE (President)

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Michel MUHLSTEIN (JMLP)

Representative(s) of Defendant(s):

— DECISION IN FULL —

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