The patent in suit is CH 701 971 B1; see Swissreg for further details. In a nutshell, ECC claimed CH’971 is a patent for the technology it alleges Nestlé Nespresso uses to block its capsules. The suit had been flatly dismissed with decision O2015_001 of 12 July 2016. The FPC held that the phrase ‘toute capsule’ / ‘any capsule’ means (literally) any capsule that is suitable for use in the machines to prepare coffee, irrespective of whether or not the capsule is retained in the machine thereafter.
[…] l’expression «toute capsule» signifie dans le présent contexte toute capsule susceptible d’être utilisée dans le dispositif (machine à café) en question, de façon à permettre la préparation d’une boisson extraite (un café), ceci indépendamment de la question de savoir si une telle capsule est retenue dans la cage après l’extraction.
The plaintiff had admitted that ECC’s modified capsules were not retained in the attacked devices. Likewise, the defendant had submitted that not all capsules are retained in the attacked devices. Concluding, the FPC held that the attacked embodiments evidently did not retain ‘toute capsule’ / ‘any capsule’. The FPC further held that the request for injunctive relief reached beyond the scope of protection conferred by the patent, and the suit had to be dismissed for this reason, too.
For further background information and details of the underlying decision O2015_001, please see this Blog here.
It had been known since April 11 that the Supreme Court had dismissed ECC’s appeal with decision of 07 April 2017:
ECC essentially argued that the generic term ‘any capsule’ meant ‘capsule of any kind’ or simply ‘capsule’ — and that the claim does not require that systematically all capsules deformable upon contact with hot water are retained. Rather, it would suffice if only a relatively high number of such capsules were retained. In a nutshell, the Supreme Court holds that there is apparently no specific meaning of the term ‘any capsule’ in the specific technology, and that the literal meaning is perfectly clear. The appellant did not identify any part of the specification of the patent that would allow for a different interpretation.
EP’092 relates to a formulation of Lilly’s drug Cialis® for treatment of erectile dysfunction. But this is not the only indication: The very same active ingredient tadalafil is also used in the treatment of pulmonary arterial hypertension, marketed under the tradename Adcirca®. EP’092 would have reached its maximum term only in August 2020.
Stakes are high: Cialis® still is one of Lilly’s top-selling drugs; it has generated a worldwide revenue of $2,311 million in 2015. Cialis® had been protected by the compound patent EP 740 668 B1 (see Swissreg and the EPO Register for further details, in particular the legal status information), but the patent had reached its maximum term already back in January 2015. However, Cialis® is still protected by supplementary protection certificates (SPCs) which are about to lapse in ‘major European countries’ in November 2017 (see Lilly’s Annual Report 2015, p F31 and F16; and e.g. the SPC in the German Register).
Swissmedic granted market approval #56018 for Cialis only on May 4, 2004, and this is why the timeline is different in Switzerland. The Swiss SPC C00740668/01 for tadalafil is valid until May 3, 2019.
EP’092 would have reached its maximum term only about 1.5 years after the end of the term of the SPC. But the FPC had declared EP’092 invalid with decision O2015_007 of 17 February 2016, commented on this Blog here. Noteworthy, this was a decision rendered in absentia. The defendant / patentee had undoubtedly been served with the writ via diplomatic channels — but did not take up the fight.
It turned out later that the writ apparently had been internally mishandled and that ICOS only got aware of the proceedings when the decision had already been issued. ICOS tried to re-start the first instance proceedings via restitution, but the FPC dismissed ICOS’ request for restitution; see this Blog here. This dismissal has not been appealed.
ICOS also lodged an appeal against the first instance judgement in absentia and requested that the first instance judgement be lifted, the case be remitted to the FPC and that a time limit be set to respond to the writ. This appeal has now been dismissed.
Now, what is this appeal all about?
A firm of patent attorneys had been indicated as ‘representative’ in the Swiss patent register Swissreg. However, the writ had been served to and well received by the patentee in the U.S.; the appeal is all about whether or not this service had been correctly effected.
i) Is the firm of patent attorneys listed as ‘representative’ in Swissreg an active representative in the sense of Art. 137 CPC?
A legal entity may well represent clients before the Patent Office in administrative proceedings; Art. 1(3) PatAA. Not so before the FPC. The Supreme Court thus holds that an active representation can be ruled out for this reason alone.
ii) Is the firm of patent attorneys an address for service of process, a passive representation / domicile for service in the sense of Art. 140 CPC?
The decision discusses the various changes to Art. 13 PatA; it now reads as follows (emphasis added):
(1) Any person who is involved in administrative proceedings provided for in this Act and does not have a residence or principle place of business in Switzerland, must designate an address for service in Switzerland. […]
Earlier versions explicitly recited representation also before civil courts, but this has been deleted with effect as of January 1, 2011. The Supreme Court thus holds that the writ had not to be served to firm of patent attorneys listed as representative in Swissreg; this would actually have been unlawful. Rather, it had been correctly served to the patentee according to Art. 137 CPC.
iii) Did the FPC violate the good faith principle?
All those who participate in proceedings must act in good faith; Art. 52 CPC. The Supreme Court leaves no doubt about the fact that service of process had been correctly effected, and that neither the FPC nor the plaintiff had any reason to act differently.
The Supreme Court thus dismissed ICOS’ appeal and the Swiss part of EP 1 200 092 B1 is finally revoked; see Swissreg.
What’s going on elsewhere?
The subject-matter is currently being litigated in various countries. To the best of my knowledge, no decision has upheld EP’092 by now.
A publicly available judgement has e.g. been issued by the District Court of The Hague, the Netherlands, on 26 October 2016 (case no. C/09/493389 / HA ZA 15-862), revoking the patent on substantive grounds. You will find a brief review of this decision on EPLAW Patent Blog.
Likewise, EP’092 has been held invalid by the England and Wales Patents Court (Birss J) with judgment of 10 August 2016 (case no. [2016] EWHC 1955 (Pat)). A brief review of this decision can be found e.g. on Lexology.
The FPC had declared ICOS’ EP 1 200 092 B1 invalid with decision of 17 February 2016 (O2015_007); the patent relates to certain formulations of tadalafil, the active ingredient of one of Lilly’s top-selling drugs, Cialis®. This decision had been rendered in absentia; ICOS had failed to respond. The writ had been served to and received by ICOS in the U.S., but has apparently been mishandled internally. A request for restitution has been dismissed by the FPC with decision of 23 May 2016 (O2016_002). ICOS also appealed the decision of 17 February 2016 and alleged incorrect service of process. The Supreme Court now dismissed the appeal and held that the writ had correctly not been served to the firm of patent attorneys listed as representatives of the patent in Swissreg. The Swiss part of EP’092 is thus finally revoked.
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The Supreme Court has now dismissed Saurer’s appeal, to the extent it has been considered at all.
First, the appellant apparently aimed at protective measures for the documents to be provided in compliance with the FPC’s order on information and accounting accounting. The Supreme Court did not grant protective measures, in the absence of a specific request towards this end. A procedural — and unspecific — request was not sufficient.
Second, the appellant essentially argued that the injunction as ordered by the FPC reaches beyond the scope of the patent. The Supreme Court did not agree: The injunction requires that the tip only penetrates the layer which is to be cut, and this is well within the scope of the patent.
The appellant also objected to the claim construction and its application on the attacked embodiment. Both objections were held unfounded, to the extent considered at all.
Reported by Martin WILMING
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BIBLIOGRAPHY
Case No. 4A_371/2016 (Supreme Court) ¦ Decision of 14 October 2016 ¦ “HeatCut”
When an allegedly infringing method or device does not literally fulfil one or more features of the claim but comprises replacing features instead, the following three questions need to be answered in the affirmative in order to conclude that the allegedly infringing method or device is within the scope of the claim:
(1.) Does the replacing feature objectively fulfil the same function? (“Gleichwirkung”)
(2.) Was the person skilled in the art enabled to find the replacing feature as having the same effect? Are the replaced features and their objectively same function rendered obvious by the teaching of the patent to the person of skill in the art? (“Auffindbarkeit”)
(3.) With due consideration of the claim wording in view of the description: Would the person skilled in the art have taken the replacing features into account as being an equivalent solution? (“Gleichwertigkeit”) (r. 17.2)
(Non-official translation from German into English language)
We already catched a glimpse of what was going on earlier this year; see the post on ex-parte injunctions of 26 May 2013. Now, we get some deeper insight into the subject-matter at stake. At first, I felt the take-away message is clear-cut: The FPC assess infringement under the doctrine of equivalents using essentially the Schneidmesser questionnaire established in Germany. That’s it. But this would have been too narrowly considered. On closer scrutiny, things are (much) more difficult. In fact, this case might turn out to be a masterclass in assessment of equivalents in various countries.
1. Background of the case
Drospirenone (DRSP; click to enlarge)
The plaintiff sought for preliminary injunctive relief and invoked two European patents: EP 0 918 791 B3 (hereinafter the ‘791 patent; see the European patent register for further details) and EP 1 149 840 B2 (which is a divisional of the ‘791 patent; hereinafter the ‘840 patent); see the European patent register for further details. Both patents relate to methods for the production of drospirenone (DRSP), a compound used in contraceptives (birth control pills).
Drospirenone closely resembles natural progesterone. Drospirenone-containing pills are presumably the most widely prescribed hormonal contraceptives in the world today. Proprietor of both European patents is Bayer Pharma AG, according to Swissreg (cf. here and here). Drospirenone-containing pills are one of the – if not the – best selling product of Bayer Pharma AG; see some further information directly on the website of Bayer Pharma AG. Thus, it’s reasonable to assume that Bayer Pharma AG or a connected undertaking is the plaintiff. The situation is not that clear to me with respect to the defendant(s), and I am not going to speculate.
2. The decision of the FPC
i) Ex-parte interim measures
As already outlined in an earlier post, the ex-parte injunction in this case was not granted without any prior hearing of the defendant. In fact, the parties had already presented their case in writing, and a hearing with oral reply and rejoinder had already taken place on 31 January 2013. Moreover, the reporting judge had already presented his preliminary opinion on the merits of the case — presumably essentially in the sense of the present decision. Only shortly thereafter, on 7 February 2013, the plaintiff noticed that not all allegedly infringing products were withheld at the customs but that some appeared on the market in Switzerland. Under these circumstances, the FPC granted an ex-parte injunction.
ii) Rectification of the record
The record of the hearing is quite lengthy (49 p.), and both parties requested rectifications of the record. The plaintiff did so within three days, pointed to five specific issues and indicated precisely what the correction should be. All these rectifications were accordingly made by the FPC.
The defendant filed his request for rectification only after seventeen days. The FPC held that this request was filed too late and thus already failed for this reason. Moreover, the defendant did not indicate what the correction should be, but rather requested the correction to be made on the basis of the tape. The FPC reminded the parties that the record is to contain the overall content of the submissions, but needs not to be a literal transcript (Art. 235(2) CPC; note that the non-official English translation of the CPC fails to properly recite the German wording “dem wesentlichen Inhalt nach“).
iii) Value in dispute
The plaintiff had estimated the value in dispute to about CHF 500’000,– and indicated that this is a common value in summary proceedings pertaining to patents in the pharaceutical field. On the other hand, the defendant provided a reasoned estimation of the value in dispute to exceed CHF 1’000’000,– . The FPC agreed with the defendant. “Common values” are irrelevant. What counts is the individual assessment of each case.
iv) Assessment of equivalents
Here we are at the very core of the dispute. A little bit of chemistry is no longer avoidable. Let’s have a look at the final steps in synthesis of drospirenone (DRSP; click to enlarge):
The starting molecule is the alkine ZK 34506 which is hydrated to form the compound ZK 92836 (step A). Next, ZK 92836 is oxidised to form the cyclic lactone ZK 90965 (step B). Finally, water is eliminated from ZK 90965 to form the enone DRSP (step C).
In simple terms, claim 1 of EP’791 protects the reaction scheme as outlined above, wherein step B is carried out in the presence of a ruthenium salt as a catalyst. Step C is not specified any further.
On the other hand, the only claim 1 of EP’840 specifically pertains to step C only and requires that dehydration is carried out through addition of p-toluenesulfonic acid.
Apparently, the plaintiff sought for injunctive relief with respect to two different methods. With respect to a “first method”, the FPC held that the plaintiff had not credibly shown that this method is effectively used by the (supplier of the) defendant, in particular in view of the injunction issued with decision 4a O 49/12 – Drospirenon of the Dusseldorf regional court; cf. r. 16. This Dusseldorf decision specifically pertains to the dehydration through addition of p-toluenesulfonic acid and refers to WO 2006/061309 A1 in this respect (more specifically to example 7, relating to a method of manufacturing DRSP that does not rely on a ruthenium salt as catalyst in step B, but still uses p-toluenesulfonic acid in step C). Even the plaintiff seemingly suspected that p-toluenesulfonic acid is not used by the defendant (anymore).
The “second method” is the more interesting one. The defendant did not dispute that the “second method” is used. Apparently, the following features were not literally fulfilled:
With respect to EP’791, step B is not carried out in the presence of a ruthenium salt as a catalyst, but rather in the presence of TEMPO in combination with Ca(OCl)2.
With respect to EP’840, dehydration is not carried out through addition of p-toluenesulfonic acid, but rather in the presence of pyridine/water.
The FPC concluded that both the ruthenium salt on the one hand and TEMPO in combination with Ca(OCl)2 on the other hand objectively fulfil the same function (catalysis), in the absence of any further limitation with respect to the specific mechanism of catalysis in the patent in suit (“Gleichwirkung”). The FPC then briefly discussed whether the person skilled in the art was enabled to find TEMPO in combination with Ca(OCl)2 as having the same effect, but finally left this undecided (“Auffindbarkeit”). Rather, the FPC held that the person skilled in the art would not have taken TEMPO in combination with Ca(OCl)2 into account as being an equivalent solution, with due consideration of the claim wording in view of the description (“Gleichwertigkeit”), for the following reasons: First, EP’791 explicitly aims to replace toxic chromium compounds with catalytic amounts of a metal compound. The ruthenium salt catalyis is said to be the key reaction in EP’791 (cf. para. [0012]). The FPC thus held that this does not suggest the applicability of an organic radical like TEMPO, and EP’791 is not infringed (r. 17.4-17.8).
Apparently, courts in the Netherlands (Rechtsbank Den Haag, C/09/432919 / KG ZA 12-1391), Germany (Dusseldorf regional court, 4a O 190/12 and 4a O 192/12; both confirmed by the higher regional court with decisions 2 U 26/13 and 2 U 25/13, respectively) and Italy (Corto di Appello di Torino) have also issued decisions on this topic. Of course, the final outcome in main proceedings is to be awaited, but this is where we stand today, to the best of my knowledge:
TEMPO / Ca(OCl)2 replacing a ruthenium salt (EP’791) is held to be …
an infringement in …
no infringement in …
IT*
x
NL
x
CH
x
DE
x
From what is discussed in the Dusseldorf decisions, I conclude that the Italian decision relies on an opinion of a court-appointed expert. Unfortunately, I could not yet retrieve a copy of this decision.
With p-toluenesulfonic acid, step C of the above reaction scheme is an acid-catalysed elimination of water. On the other hand, pyridine/water is a weakly basic system, relying on a different reaction mechanism. Nevertheless, the result (elimination of water) is the same. The FPC thus held that both reagents fulfill the same function (“Gleichwirkung”). Since both acid- and base-catalysed elimination reactions are very basic reactions in organic chemistry, the FPC held that the person of skill in the art was enabled to find an appropriate base in general. Moreover, she/he would have also considered pyridine/water in particular since there is a pointer in the introductory part of the patent in suit, i.e. the discussion of the prior art. Therefore, the FPC held that the person of skill in the art was enabled to find pyridine/water as having the same effect (“Auffindbarkeit”). Finally, the FPC held that the person of skill in the art would also have taken pyridine/water into account as an equivalent means, since this reagent is known to her/him (as is evident from the discussion of the prior art in the patent in suit).
Concluding, the FPC held that EP’840 is infringed under the doctrine of equivalents and granted a preliminary injunction.
Again, what’s going on elsewhere? Note that the FPC was aware of the fact that the Rechtsbank Den Haag (C/09/432919 / KG ZA 12-1391) had decided the same question differently (r. 18.3, last para.). Later, the Dusseldorf court in the decisions 4a O 193/12 – Drospirenon II and 4a O 191/12 explicitly took the decision of the FPC into account — and decided for non-infringement. This was confirmed by the Dusseldorf higher regional court in decisions 2 U 23/13 and 2 U 24/13, respectively. To the contrary, the appelate court of Brussels (Belgium) decided for infringement (decision of March 25, 2013 — 2012/KR/127; unfortunately, I could not yet retrieve a copy of this decision). Of course, the final outcome in main proceedings is to be awaited, but this is where we stand today, to the best of my knowledge:
Pyridine/water replacing p-toluenesulfonic acid (EP’840) is held to be …
an infringement in …
no infringement in …
NL
x
BE
x
CH
x
DE
x
3. The decision of the Supreme Court
In summary proceedings, the Supreme Court does not examine the case on the merits again. Generally speaking, only violations of the law are reviewed, but not the discretionary adjudication of the first instance. The defendant referred to the decisions of the Dusseldorf regional court; see above. However, this was not considered by the Supreme Court for that it was only lately filed. It would have been interesting to learn more about the Supreme Court’s view on the merits of the case already now, but it’s not much of a surprise that the Supreme Court dismissed the appeal (4A_160/2013).
4. Remarks
i) What is not claimed, is disclaimed(?)
Perhaps the best-known statement of the status of the claims in UK law is by Lord Russell of Killowen in Electric and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23, 39 (emphasis added):
The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.
So, how to deal with the following situation:
The claim requires a feature (A). A variant (B) is outlined in the description of the patent, but not in the claims. Is there any room for equivalency, i.e. to cover embodiments with variant (B) under the doctrine of equivalents?
After the decision Okklusionsvorrichtung of the Federal Supreme Court in Germany, some practitioners feared (and some hoped) that the answer might be a clear “No”. In the meantime, the decision Diglycidylverbindung of the Federal Supreme Court provided some further guidance on the assessment in such cases. In a first step, the specific technical effect of the claimed feature (A) has to be determined in order to differentiate it from the alternative feature (B) mentioned in the description but not included in the claim. Second, it has to be established whether the allegedly infringing means provides for the specific technical effect of the claimed feature (A) and thus differs from the alternative feature (B) mentioned only in the description in the same way as the claimed feature (A).
It will be interesting to read a decision of the FPC in such a situation (in the present matter, the pointer to pyridine/water in the introductory part of EP’840 was apparently not held to preclude equivalency). In an obiter dictum, the FPC seemingly tends to assess such situations in line with the Federal Supreme Court in Germany: It is likely that variants explicitly outlined in the description but not in the claims cannot be considered to be covered under the doctrine of equivalents but rather are waived (r. 17.1, last para.).
Wäre das Mittel nämlich in der Beschreibung aufgeführt, aber nicht im Anspruch, müsste daraus voraussichtlich geschlossen werden, dass der Anmelder auf dessen Beanspruchung verzichtet hat und die betreffende Ausführungsart nicht unter Schutz stellen wollte.
ii) Questionaires for assessement of equivalents – a broader European picture
In order to assess equivalency, the landmark decision in UK is Improver Corporation v Remington Consumer Products Limited (1990) FSR 181, 189. Questions to be answered in the assessement of equivalency are frequently referred to as Improver questions:
(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no-
(2) Would this (i.e. that the variant had no material effect) have been obvious at the date of the publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes –
(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim. On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which included the variant and the literal meaning, the latter meaning, the latter being perhaps the most perfect, best-known or striking example of the class.
In Germany, the Federal Supreme Court (BGH) took over a similar schedule of assessment in the decisions Schneidmesser I and Schneidmesser II:
(1) Does the modified embodiment solve the problem underlying the invention by means which have objectively the same technical effect?
(2) Was the person skilled in the art enabled by his expertise on the priority date to find the modified means as having the same effect?
(3) While answering question two, are the considerations that the person skilled in the art applies drawn from the technical teaching of the patent claim (so that the person skilled in the art took the modified embodiment into account as being an equivalent solution)?
And, finally, the test known from the Formstein decision (X ZR 28/85) of the German Federal Supreme Court (a kind of litmus test to preclude that a claim is construed overly broad, i.e. covering prior art):
(4) Is the modified embodiment anticipated or made obvious by the state of the art?
How was this dealt with in Switzerland by now? Well, questions (1) and (2) were already in use (BGE 97 II 85, r. 2; BGE 97 II 85, r. 1; BGE 125 III 29, r. 3b; BGE 115 II 490, r. 2a.), but a third question was missing — until now. However, the present case strikingly shows that similar questionnaires do not necessarily result in similar decisions. Hopefully, there is no revival of Epilady® or Spannschraube on the rise.
For the background of the case and the underlying decision of the FPC in detail, please see this blog here. In brief, the FPC had ruled that it is competent to decide on claims for injunctive relief and damages, pertaining to infrastructure for collecting the performance-related heavy vehicle fee (HVF) levied in Switzerland.
The Swiss Confederation lodged an appeal against the decision of the FPC. For now, only the issues of competency of the FPC are at stake.
The Supreme Court ruled as follows:
1. Competency of the FPC with respect to injunctive relief
The Supreme Court stressed that a patentee’s rights are emanating from the Federal Act on Invention Patents which is part of the civil law. A patent is a property in the sense of Art. 26(1) of the Federal Constitution and as such is protected by the constitutional principle of guarantee of ownership (BGE 126 III 129, reasons 8a). The Confederation can be patentee, and on the other hand it has to respect patent rights. Consequently, the Confederation is not entitled to infringe a patent, even if it acts in public interest (reasons 2.3.1).
Das Gemeinwesen wird somit auch im Rahmen der Erfüllung öffentlicher Aufgaben vom Ausschliesslichkeitsrecht nach Art. 8 PatG erfasst und ist insoweit grundsätzlich dem patentrechtlichen Unterlassungsanspruch (Art. 72 i.V.m. Art. 66 PatG) ausgesetzt.
Thus, the Supreme Court confirmed: The Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA).
In a detailed obiter dictum (reasons 2.3.2 ff), the Supreme Court also expanded on the competency of the FPC to decide on a claim of the Confederation for a compulsory license in the interest of the public. In case of public, non-commercial use it is not mandatory that the Confederation tries to obtain a license under market-reasonable conditions prior to filing a suit to be granted a compulsory license (Art. 40(1) and Art. 40e of the Federal Act on Invention Patents; similar to Art. 31 lit. b TRIPS). The FPC has exclusive jurisdiction in such cases (Art. 26(1) lit a PatCA). Further, the Supreme Court briefly touched on the topic whether the injunctive relief (as a right conferred by a patent) could be subject to expropriation under Art. 32(1) Federal Act on Invention Patents, but did not provide further guidance in this respect.
2. Competency of the FPC with respect to damages
The plaintiff / respondent requested damages of CHF 62’466’022,85 based on civil law (Art. 73(1) Federal Act on Invention Patents; Art. 41 ff, Art. 62 ff and Art. 423 Code of Obligations). However, the Confederation is only liable under civil law in case of commercial activities, not in case of activities that concern a public function. The Supreme Court held that the use of the infrastructure and the collection of the HVF is undoubtedly carried out by the Confederation in a public function (see also BGE 128 III 76, reasons 1a in this respect).
Die strittige Verwendung der technischen Infrastruktur […] erfolgt unbestreitbar im Rahmen der Wahrnehmung einer öffentlichen Aufgabe. Eine gewerbliche Tätigkeit, die grundsätzlich Privaten wie Nichtprivaten offensteht und bei welcher die Erzielung von Gewinn eine Rolle spielt, liegt beim fraglichen Betrieb der technischen Infrastruktur nicht vor […].
Consequently, the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.
Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”
This case pertains to the performance-related heavy vehicle fee (HVF) levied in Switzerland. The Robert Bosch LLC of Germany (plaintiff) is patentee of EP 0 741 373 B1, entitled “System for detecting the distance travelled by a vehicle in a given area”; cf. Fig. 4 for illustative purposes below.
In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement with the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable.
The Federal Act on Invention Patents contains two clauses concerning the restriction of patent rights due to public interest: Art. 40 pertains to the grant of a licence in public interest to use an invention when such a licence is, without sufficient reason, refused by the owner of the patent; such licence is to be asserted in civil proceedings. The second clause (Art. 32) provides for the whole or partial expropriation of a patent by the Federal Council, if public interest so requires. This measure is governed by public law, according to the Federal Act on Expropriation (Art. 16 ff.). The FPC held that both regulations are not applicable in this case since the defendant did not initiate any one of the said actions beforehand, but instead put up with the consequences of a potential patent infringement.
The FPC also expanded on the argument of the defendant that the use of the HVF-registering infrastructure is of sovereign character: It was held that the relation to assessable persons (towards whom the Swiss Confederation acts in sovereign manner) is to be distinguished from the relation to the plaintiff.
Furthermore, the defendant argued that the case is to be dealt with under public law as the HVF-registration system was installed in accordance with a public submission procedure. However, the FPC held that this does not qualify the case as a matter of public law because it cannot be investigated in public law proceedings whether the patent of the plaintiff is infringed or not.
Finally, the FPC considered the various criteria developed by the Federal Supreme Court to distinguish between litigations governed by public and civil law (cf. inter aliaBGE 123 III 346, r. 1a; BGE 120 II 11, r. 2a). The FPC held that the plaintiff confronts the defendant as a coequal legal entity and that the requested legal remedies further support the assumption that civil law is to be applied to the present case.
Consequently, the FPC decided to consider the case as the competent court (Art. 59 para. 1 in conjunction with Art. 237 para. 1 CPC).
(Update 10 April 2013: This decision of the FPC was partly overruled by the Supreme Court; see this blog here.)
Reported by Martin WILMING and Jennifer BOESE
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BIBLIOGRAPHY
Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”
Case No. O2012_012 ¦ Decision of 20 February 2012 ¦ “Nichteintreten”
This is a somewhat weird case. The claim was not at all comprehensible. It only became clear that the plaintiff alleged to be a licensee of EP 1 449 391 B1, owned by Zoltan Pal. However, neither the defendant was identified, nor the alleged infringement or any details concerning the license contract. Anyhow, license fees of some hundred million CHF were alleged to be outstanding (creditor or debtor remained obscure). Not even a comprehensible request was presented. Some reference was made to a nullity suit in Germany against EP 1 449 391 B1, allegedly filed by Apple Inc., represented by Bardehle Pagenberg.
The FPC finally did not consider the case, in view of incomprehensibility of the claim (Art. 132 para. 1 and 2 CPC; Art. 23 para. 1 lit. a PatCA).
Anzufügen bleibt, dass es dem Kläger nicht etwa (im Sinne von Art. 69 ZPO) am Vermögen gebricht, sein Anliegen zu Papier zu bringen. Er schreibt gegenteils eloquent – aber er scheint nicht willens, sich an die prozessualen Vorgaben zu halten.
Reported by Martin WILMING
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BIBLIOGRAPHY
Case No. O2012_012 ¦ Decision of 20 February 2012 ¦ “Nichteintreten”
(not identified) ./. (not identified)
Subject(s):
Patent
Composition of the Board of the FPC:
Dr. iur. Dieter BRÄNDLE (President, Single Judge)
Lic. iur. Jakob ZELLWEGER (First Court Secretary)
Representative(s) of (not identified plaintiff):
(none)
Representative(s) of (not identified defendant):
(none)
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The patent in suit is CH 701 971 B1; see Swissreg for further details. In a nutshell, ECC claimed CH’971 is a patent for the technology it alleges Nestlé Nespresso uses to block its capsules. The suit had been flatly dismissed with decision O2015_001 of 12 July 2016. The FPC held that the phrase ‘toute capsule’ / ‘any capsule’ means (literally) any capsule that is suitable for use in the machines to prepare coffee, irrespective of whether or not the capsule is retained in the machine thereafter.
The plaintiff had admitted that ECC’s modified capsules were not retained in the attacked devices. Likewise, the defendant had submitted that not all capsules are retained in the attacked devices. Concluding, the FPC held that the attacked embodiments evidently did not retain ‘toute capsule’ / ‘any capsule’. The FPC further held that the request for injunctive relief reached beyond the scope of protection conferred by the patent, and the suit had to be dismissed for this reason, too.
