Struggling with the burden of proof

Case No. O2015_009 ¦ Decision of 21 March 2018 ¦ ‘Wärmeaustauschelement: Feststellung der gemeinsamen Berechtigung an der Anmeldung’

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.

HEADNOTE

Art. 58(1) CPC
Binding nature of prayers for relief, principle of party disposition

The request that the court should find the plaintiff to be solely entitled to a patent or patent application includes a maiore minus the request that the court should find the plaintiff to be entitled to the patent or patent application together with another party (see r. 2.3).

This case is an assignment action of Marcel Riendeau against Zehnder Group International AG. Some background information on this case can be found on this Blog here.

Two European patent applications are concerned, i.e.:

Both EP2 and EP3 had been filed in Zehnder’s name only; the plaintiff had been designated only as inventor.

Independent claims 1 of both EP2 and EP3 are all about methods for the production of enthalpy heat exchanger elements; they read as follows:

EP2 EP3
1. Method for the production of enthalpy exchanger elements comprising steps of:
a perforating a flat plate element (1) according to a predetermined perforation pattern within the plate outer dimensions; perforating a flat plate element (1) according to a predetermined perforation pattern (2, 2, …) within the plate outer dimensions;
b forming the plate element (1) into a desired embossing pattern and geometrical shape; and applying to at least one side (1a) of the plate element (1) a thin polymer film (3) with water vapor transmission characteristics […];
c applying to at least one side (1a) of the plate element (1) a polymer film (3) with water vapor permeation characteristics […]. forming the plate element (1) into a desired shape exhibiting a corrugation pattern (4, 4, …), whereby the polymer film (3) is formed into the same corrugation pattern shape as that of the plate element (1).

This can be best understood with the following figures at hand:

The decision is pretty exhaustive; I feel the most relevant issues of potentially broader interest are the following:

Admissibility of late requests

The plaintiff had requested with the rejoinder that his sole ownership of the patent applications be declared. An explicit auxiliary request for declaration of co-ownership was submitted in reply to the expert opinion of the judge-rapporteur. This request was not admitted into the proceedings anymore, with reference to O2015_009.  However, the decision holds that the request for sole ownership includes a majore minus the request that the plaintiff is not the sole owner but rather only co-owner together with others (see hn). In contrast to a new version of the patent applications like in O2015_009, this does not constitute a new issue.

This finding is in-line with how such situations are addressed in Germany; see the German Supreme Court decision X ZR 139/03 'Schneidbrennerdüse'.

Allocation of the burden of proof

The person who claims to derive rights from it must prove the existence of an alleged fact; Art. 8 CC. The decision thus holds that it is up to the plaintiff to prove all elements of the test outlined in O2012_001 (r. 27), i.e.

  • that he actually made the invention on his own (when, where and how);
  • how the defendant was made aware of this invention; and
  • how this invention is reflected in the application(s) in suit.

It is reiterated again that dependent claims and even the specification have to be dealt with. Only subordinate and routine details can be ignored.

Eine Patentanmeldung umfasst regelmässig technische Lehren, die über den Gegenstand der unabhängigen Ansprüche hinausgehen respektive diesen wesentlich weiter konkretisieren. Solche Gegenstände können sich in den abhängigen Ansprüchen, aber auch in der Beschreibung finden. Wer behauptet, alleiniger Erfinder der in einer Patentanmeldung offenbarten Lehre zu sein, muss daher darlegen, dass er der geistige Urheber aller darin der Fachperson unmittelbar und eindeutig offenbarten Lehren ist, soweit es sich bei den offenbarten technischen Details nicht um untergeordnete, bloss handwerkliche Details handelt.

The decision does not expand further on how to assess whether a certain feature or technical detail is merely a subordinate element / routine detail or not. This still remains to be seen in cases to come.

Further, the plaintiff needs to prove that no rights had been assigned to the defendant; see below. However, this is an indefinite negative fact and the defendant is thus required to at least substantiatedly assert why he believes that the right had been assigned; see BGE 119 II 305, r. 1b; 4C.64/2003, r. 4.

Authorship of draft applications does not prove (sole) inventorship

The decision holds that the mere fact that the plaintiff had (undisputedly) drafted first versions of the patent application(s) does not yet prove that he had invented the respective subject-matter solely on his own. In the view of the defendant, the draft patent application(s) only summarized the results of the joint development. Since the burden of proof lies with the plaintiff in this respect, the decision holds that he has to bear the consequences of the remaining doubt.

In any event, it remained undisputed that the plaintiff is one of the inventors of the subject-matter of EP2 and EP3.

Contractual assignment?

The parties have agreed in the main hearing to submit their contractual relationship to Swiss law. In an overall assessment of the allegations and evidence, the decision holds that the parties could neither agree on a written consultancy agreement which would have provided for an explicit transfer of rights, nor did they live it unconditionally. The oral work order to the plaintiff did not clearly include the task of making inventions. The defendant is therefore not the legal successor of the plaintiff with regard to the rights to the patents to which he is entitled on the basis of his position as (co-)inventor.

The right to claim priority

The plaintiff had requested that the claims to priority of EP2 and EP3 in the corresponding PCT applications WO’544 and WO’543 were to be deleted. Towards this end, the decision holds that for a valid priority claim only formal identity of the applicant(s) at the time of filing of the applictions is required; it is referred to T1201/14 (r. 3.2.1.1 ff.), T5/05 and T788/05 in this respect. In the case at hand, identity of the applicant of both the PCT applicantions and the EP priority applications had been the same (Zehnder). On the other hand, the decision also holds that even if one would assume that the legally correct ownership would be decisive, the result would have been the same since both parties are jointly entitled to both the priority applications and the PCT applications. The request was thus dismissed.

Is the EPO doing it wrong?

That could have been it. But in a surprisingly clear-cut obiter dictum the decision holds that the EPO constantly gets priority issues wrong. It is held that contrary to the case law of the Boards of Appeal of the EPO (e.g. T788/05 (r. 2) and T382/07 (r. 9)), it is sufficient for the priority claim under Art. 87(1) EPC to be valid if at least one of the applicants of the prior application and one of the applicants of the subsequent application are identical. Note that this is the approach taken e.g. in the U.S., see MPEP. If a person that is no longer named as applicant in the subsequent application wishes to assert substantive claims to the patent, he may do so before court.

Entgegen der Rechtsprechung der Beschwerdekammern des EPA genügt es […], wenn wenigstens einer der Anmelder der Voranmeldung und einer der Anmelder der Nachanmeldung identisch sind. […] Soweit in der Nachanmeldung nicht mehr als Anmelder genannte Personen materielle Ansprüche auf das Patent geltend machen wollen, können sie das auf dem Wege der Abtretungsklage tun.

Making a long story short, the decision holds that the parties are jointly entitled to both patent applications.

The decision is not yet final / still open for appeal to the Supreme Court.

UPDATE 08 May 2018:

The decision has been appealed to the Supreme Court.

UPDATE 04 October 2018:

The appeal has been dismissed by the Supreme Court (4A_277/2018; reasons not yet available).

Reported by Martin WILMING


BIBLIOGRAPHY

Case No. O2015_009 ¦ Decision of 21 March 2018 ¦ ‘Wärmeaustauschelement: Feststellung der gemeinsamen Berechtigung an der Anmeldung’

Marcel Riendeau
./.
Zehnder Group International AG

Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Philipp RÜFENACHT
  • Dr. Ralph SCHLOSSER
  • Dr. Christoph WILLI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Stefan KOHLER (Vischer)
  • Delia FEHR-BOSSHARD (Vischer)
  • Benoit YELLE (Gowling), assisting in patent matters
  • Matthew FINN (Gowling), assisting in patent matters
  • Dr. Martin WILMING (Hepp Wenger Ryffel), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

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EP 2 829 834 A1
(referred to as EP2 in the decision)

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EP 2 829 836 A1
(referred to as EP3 in the decision)

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An incredibly complex mechanical writing instrument not of this world

Case No. O2015_018 ¦ Main hearing of 13 March 2018

UPDATE 13 March 2018:

I have added some notes from the hearing below.

The FPC today published an announcement of the main hearing in this matter. The parties apparently have locked jaws about an invention relating to a mechanical writing instrument.

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.

The plaintiff argued that the invention had been made by Frédéric Garinaud, an independent inventor who had applied for a European patent for this invention. The application has then been assigned to the plaintiff and a patent was granted; EP 2 479 648 B1, see Swissreg and European Patent Register for further bibliographic details.

Defendant countersued and requested that EP’648 be declared invalid, or assigned to the defendant. Interestingly, defendant argues that the invention had been made by Frédéric Garinaud when he had been working for the defendant. (Note, however, that Mr Garinaud is not mentioned as an inventor on CH’790.)

In addition, defendant requests injunctive relief for the product ‘Mechanical Fountain Pen RMS05‘.

Fountain Pen RMS05 by Richard Mille

This product has some amazing mechanics; see yourself:

Even more amazing is the price tag of $105,000 (as reported by Bloomberg and others).

The hearing will be in French language, and it will be a real ‘town hall’ meeting: The venue this time is not the Federal Administrative Court in St. Gallen, but rather the Hôtel de Ville de Neuchâtel.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_018 ¦ Main hearing of 13 March 2018

Guenat SA Montres Valgine ./.  Swiss Finest SA

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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ANNOUNCEMENT

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NOTES FROM THE HEARING

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Whose invention is it?

Case No. S2017_008 ¦ Decision of 29 December 2017 ¦ “Abweisung vorsorgliche Massnahme, Abtretungsanspruch nicht glaubhaft”

Yet another ownership dispute:

Fig. 1b of WO’036

PCT application WO 2016/125036 A1 is at stake; the national phase has already been entered in Switzerland, China, South Korea, USA and at the European Patent Office; please find further information about the patent family here.

The present decision pertains to some interim measures. Inter alia, the plaintiff had requested that an order be issued to the defendant to not dispose of the applications in suit in any way, or to let them lapse. Main proceedings to actually sort out the right in the invention are still pending; O2017_026. See the full complaint below.

The plaintiff had initially been named as an inventor and is still listed on the title page of the PCT application as published, but has later been deleted on request of the applicant while still in the international phase.

The plaintiff essentially relied on an SMS and MMS that he had submitted to the defendant on 6 November 2013:

Bei der PCT-Anmeldung […] handelt es sich um die dargestellte Erfindung des Klägers, die dieser […] am 6. November 2013 D. bzw. der Beklagten mitgeteilt hat; es liegt technische Übereinstimmung vor. Weitere Ausführungen im Bestreitungsfalle bleiben vorbehalten.

MMS and SMS of November 6, 2013

The decision holds that this is obviously not sufficient to establish a prima facie case of entitlement to a patent application of 13 pages, 17 figures and 13 claims. The (then) President notes that the plaintiff failed to show that the three necessary elements (in particular the last one) are met, i.e.

  • that he actually made the invention (what exactly, when, where and how);
  • how the defendant has been made aware of this invention; and
  • how the subject-matter claimed by the defendant actually corresponds to this invention.

For the sake of completeness, the decision also recites two features from claim 1 of the PCT application which cannot be derived from the MMS and SMS. The plaintiff thus failed to show by prima facie evidence that he has any right in the invention at stake.

Further, there was no indication of any urgency on file, i.e. that the defendant might actually undertake any of the actions that were sought to be forbidden. The requested interim measures were denied also for this reason.

UPDATE 10 March 2018:

I just noticed that actually two applications are pending in the U.S., i.e. a continuation application of the PCT application in the name of the plaintiff (US 2017 / 0325923 A1) and a further national phase entry based on the same PCT application in the name of the defendant (US 2018 / 0000560 A1). It remains to be seen how these two applications will interfere with each other during prosecution.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_008 ¦ Decision of 29 December 2017 ¦ “Abweisung vorsorgliche Massnahme, Abtretungsanspruch nicht glaubhaft”

David Bensoussan ./. ROCK dental AG

Judge(s):

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • n/a

DECISION IN FULL

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The correct case no. is S2017_008, as indicated on the title page. Don’t be misled by case no. S2017_002 in the header of pages 2 ff of the decision; that’s a typo.

COMPLAINT AS FILED

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UPDATE 07 March 2018:

Upon intervention of plaintiff’s counsel, I have deliberately redacted plaintiff’s private address and the signatures of plaintiff’s counsel from the complaint, without acknowledging any legal obligation to do so. The writ is freely available in unredacted form in the European Patent Register since 29 December 2017.

PATENT APPLICATION IN SUIT

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Bystronic Laser AG ./. Tomologic AB

We have reported on this matter already on February 3, 2017 when ex parte interim measures have been denied; see this Blog here.

At that time, it has only been an educated guess that Bystronic Laser AG and Tomologic AB were involved. But it is confirmed now: We can catch a glimpse of what is going on in main proceedings O2017_002 at the FPC from the EPO online files of EP 2 485 864 B1 (see EPO Register) and EP 2 694 241 (published as WO 2012/136262 A1; see EPO Register).

As noted in the Register, both cases have been stayed now; EP’864 in opposition proceedings, EP’241 shortly before grant:

The EPO file wrapper are telling. Bystronic Laser AG joined the pending opposition proceedings re EP’864 in accordance with Art. 105(1) lit. b EPC, based on the requested declaratory judgment of non-infringement which has been requested in O2017_002 besides assignment to co-ownership. Exhaustive arguments and evidence have been submitted. It’s hard to sort this out; the file wrapper is a mess. If you consider downloading it yourself, beware: The docket is huge (about 5’000 pages, 1.1 Gb), unsorted and documentary evidence is unfortunately not marked with identifiers. Good luck.

UPDATE July 4, 2017, further to the above parapraph:

If you are not afraid of big data, I strongly encourage you to do your own research in the online docket. Note that parties to EPO proceedings are not obliged to mark-up documentary evidence with identifiers. The online file wrapper of the EPO is beyond control of the parties.

We did quite some digging in the dockets, and interesting insight may be gained from prior correspondence between the parties’ counsel. Apparently, there have been intense discussions prior to litigation:

Details of the intervention of Bystronic Laser AG in opposition proceedings re EP’864:

Correspondence with the EPO’s legal division with respect to the stay of the proceedings:

It will be interesting to read more from the FPC on this matter. Stay tuned …

Reported by Ingo LUMMER and Martin WILMING

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Register ban upheld, the crowd of defendants cleared

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A first decision in this matter was issued on 31 January 2017; see this Blog here for a review of the subject matter at stake. In brief, a register ban had been ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution of a patent application which is the subject of an ownership dispute.

UPDATE May 31, 2017:

The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.

A hearing had initially been scheduled for 29 March 2017, but it need not take place: Defendant (1) did not object to the ex parte interim measures. The register ban will thus be maintained pending main proceedings O2017_003.

Apparently, defendants (2) and (3) participated in financing defendant (1). Towards this end, defendant (1) had assigned the patent application to defendant (2) on 8 July 2016. Later, the transfer has been reversed again — by verbal agreement in first place, and on 20/22 February 2017 in writing. Note that the transfer of a patent application by legal act is valid only if evidenced in writing; see Art. 33(2bis) PatA. It is beyond dispute that the current holder of the patent application is defendant (1). The plaintiff only disagrees with the retroactive effect of the re-assignment. However, defendant (2) has no standing to be sued anymore. Defendant (3) has never been the holder of the patent application and has no standing to be sued, either. The FPC thus dismissed plaintiff’s requests targeted at defendants (2) and (3).

The value in dispute is another interesting aspect of this case. The initial assignment of the patent application had been linked with a payment of CHF 594’000,–. On request of the FPC, the plaintiff thus initially submitted that the value in dispute is CHF 600’000,–. Defendants (2) and (3) submitted that CHF 594’000,– must not be considered as the actual value of the patent application. Rather, the amount had been fixed at that time in order to consolidate the financial situation of defendant (1). The plaintiff thus requested that the value in dispute shall be fixed to only CHF 50’000,–. The FPC did not re-adjust the value in dispute but rather sticked to the facts of the agreement of 8 July 2016 which at the face of it is a value determined by independent parties in an arms-length transaction.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A SA

./.

(1) B SA
(2) C S.A.
(3) D S.A.

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Frank SCHNYDER
  • Dr. Tobias BREMI

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

Representative(s) of Defendants (2) and (3):

DECISION IN FULL

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No more ‘shell games’: Register ban imposed ex-parte in an ownership dispute

Case No. S2017_003 ¦ Decision of 31 January 2017 ¦ “Mesures superprovisionnelles; interdiction de transfer, suspension IPI”

The background of this case is a cooperation with an unhappy ending, at least concerning the resulting IP. The plaintiff (A) and one of the defendants (B) had signed a confidentiality agreement on 12 July 2015 for the purpose of a joint development. Two employees of A had then worked on this project and exchanged their respective results by Email. These results were then shared with B in working meetings later on, and a specific solution was sent to B by Email on 10 September 2015. B then filed a Swiss patent application on its own on 25 November 2015. That would be enough to blow most cooperations, but it even got worse: B informed A on 11 October 2016 that the patent application had been assigned to D. And on 29 November 2016, A was informed that the patent application had been assigned to C.

A was not amused and requested that a register ban be ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution; and that B, C and D be ordered to abstain from any actions towards this end. These requests were indeed granted inasmuch as the Swiss patent application is concerned. On the contrary, the request was held inadmissible with respect to related applications unspecifically referred to in the requests. Likewise, a request for a register ban at the EPO was held inadmissible; this has to be effected in accordance with Art. 61 and R. 14 EPC.

The decision (again) outlines the essential criteria to be dealt with in patent (application) ownership disputes:

  1. Who actually has invented the disputed technology?
  2. How has the plaintiff obtained the right to be granted a patent for this technology?
  3. How has the defendant / patent applicant been informed about this technology?
  4. How is the technology reflected in the patent application at stake?

The decision holds that these criteria have been met by prima facie evidence: The plaintiff (1.) had identified the inventors; (2.) how he obtained the right to be granted a patent (i.e. by virtue of Art. 332 CO as employer); (3.) how this information had been conveyed to B (see timeline above); and (4.) how this is reflected in the patent application under dispute: Apparently, Fig. 1 of the patent application reflects all the essential elements which also corresponds to the wording of claim 1.

The multiple assignments underlined the risk of a not easily reparable harm for the plaintiff. On the contrary, the defendants are not substantially harmed by the ex parte order. As to the urgency of the matter, the decision holds that the plaintiff had acted with sufficient diligence on 18 January 2017 after having been notified of the (second) assignment on 29 November 2016, i.e. seven weeks ago. Summary proceedings can still be concluded earlier than potential main proceedings which typically take one year.

On the other hand, the diligence required for the ex parte order is less clear to me. The FPC held in an earlier case that seven weeks (what a coincidence!) were too long for a plaintiff to wait — rather, one should act ‘within one or two weeks in any event’; see this Blog here. The devil may be in the (yet unknown) detail.

As to the technology concerned, the bone of contention is a latch for a watch band with a folding clasp which can carry a biometric insert.

[…] fermoir pour bracelet de montre comportant une boucle déployante permettant de loger un insert biometrique […]

The Swiss patent application at stake has been filed only less than 18 months ago (25 November 2015); it is not yet published. We will learn more on or shortly after 25 May 2017.

And the parties? According to publicly available information, there are not too many companies in Switzerland working on exactly this topic. Actually, I could only spot a single fit I feel confident enough to share: Biowatch SA. See their promotional video from 36s onwards (embedded from Youtube):

Biowatch’s Matthias Vanoni said in an interview with welt.de on 24 February 2016 that they were developing a new latch for a watch band with a special fitting for the biometric module together with a cooperation partner, i.e. Oréade SA:

https://www.welt.de/wissenschaft/article152603723/Das-Venenmuster-als-besserer-Fingerabdruck.html
Welt.de (24.02.2016)

The hearing scheduled for March 29, 2017 will provide further insight, and the Swiss patent application will be published end of May 2017. Stay tuned!

UPDATE March 6, 2017:

The hearing scheduled for March 29, 2017 has just been canceled.

UPDATE May 31, 2017:

The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.

UPDATE Oct 2, 2017:

The matter has apparently been settled by compromise; see Matthias Vanoni’s comment in the comments section below.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 31 January 2017 ¦ “Mesures superprovisionnelles; interdiction de transfer, suspension IPI”

n/a

./.

1. n/a
2. n/a
3. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Frank SCHNYDER
  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

DECISION IN FULL

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PATENT APPLICATION IN SUIT

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No ex parte ‘shot from the hip’ in an assignment action

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

This decision provides very early insight into a litigation with an apparently rather complex setup. The plaintiff had initiated main proceedings on January 11, 2017, inter alia alleging co-ownership of two patent families currently held by the defendant. Only two days later, the plaintiff requested ex parte interim measures, i.e. that the defendant be ordered to preserve the status quo of the patent families in suit (with respect to ownership, licenses, etc.), and that a ban be noted in the Swiss patent register to prevent any changes to the Swiss part of the already granted European patent.

Allegedly, an employee of the Swiss plaintiff has largely contributed to the subject invention(s), in a joint development together with the CEO of the defendant (a company domiciled in Sweden). Two patent families are at stake, with an already granted European patent in the first family. EPO prosecution is still pending in the second family, while patents have already been granted in the U.S., Japan and Russia.

First, the President holds that the FPC only has territorial jurisdiction for the Swiss part of the European patent at stake; Art. 1(2) IPRA, Art. 31 LugC, Art. 10 lit. b IPRA. Note that the patentee / defendant is domiciled in Sweden! The request has thus not been considered at all as far as it concerned foreign patent rights.

What remains is the Swiss part of the already granted European patent. Swiss law is applicable in this respect; Art. 110(1) IPRA. In general terms, the requested injunction and the order to a register authority would be possible in accordance with Art. 262 lit. a and c CPC. However, the President held that the plaintiff failed to show the three necessary elements, i.e.

  1. that the employee of the plaintiff has contributed to or made this invention (what exactly, when, where and how);
  2. how the defendant has been made aware of this invention (or parts thereof); and
  3. how the subject-matter claimed by the defendant actually corresponds to this invention.

The plaintiff apparently did not discuss how the contribution of its employee is reflected in the claims; see item iii, above. Co-ownership was thus held to be not established for this reason alone.

Moreover, the President notes that the plaintiff failed to show an actual risk that any of the acts to be prohibited might materialize. The request also failed for this reason.

The routine exercise: Who are the parties?

Admittedly, that’s been a tricky puzzle this time. The decision is anonymized beyond recognition. Almost. We could spot a single perfect fit:

As to the first patent family, “WO 222” likely is WO 2011/042058 A1 and the European patent “EP 333” with 37 claims likely is EP 2 485 864 B1 (opposed by Trumpf Werkzeugmaschinen GmbH + Co. KG); see EPO Register and Swissreg for further details.

The second patent family is based on “WO 555” — which likely is WO 2012/136262 A1. This family has granted patents in Japan (JP 5828953 B2), Russia (RU 2 594 921 C2) and the U.S. (US 9,469,338 B2); examination of EP 2 694 241 A1 is still pending; see EPO Register.

The sole inventor of both patent families is Magnus Norberg Ohlsson, CEO of Tomologic AB, a company domiciled in Sweden.

Bystronic Laser AG likely is the counterparty. It had introduced a new online service ByOptimizer in November 2014, explicitly referring to a

[…] newly developed cluster technology from the Swedish company Tomologic. The patented technology […].

The former product page is currently offline (checked on Feb 2, 2017).

It’s only an educated guess — but wouldn’t it be an incredible coincidence if the rivals were not Bystronic Laser AG and Tomologic AB? Let’s wait and see …

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

n/a ./. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Simon HOLZER (MLL)
  • Esther BAUMGARTNER (MLL)
  • Martin TOLETI (Blum), assisting in patent matters

DECISION IN FULL

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A heated debate over heat exchangers

Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”

This case is an assignment action of Marcel Riendeau against Zehnder Group International AG. The IP rights concerned are two European patent applications and the co-pending PCT applications, i.e.:

Back in 2009, the parties apparently entered into a cooperation based on a novel heat exchanger technology that had been invented by the plaintiff. A first patent application was filed in the name of Zehnder Verkaufs- und Verwaltungs AG — subject to final contracts to be concluded. This never happened. In the meantime, this application proceeded to grant as EP 2 618 090 B1; see the European Patent Register for any details. Interestingly, it has been assigned by Zehnder Group International AG to Westwind Ltd, the one-man business of Mr Riendeau. However, this assignment is already a story in itself: Apparently, Zehnder Verkaufs- und Verwaltungs AG first assigned the application to Marcel Riendeau with an agreement dated 5 May 2014. But later, it turned out that Zehnder Verkaufs- und Verwaltungs AG did not exist anymore at that date. Its legal successor was Zehnder Group International AG, the defendant on file.

At the technical side, the invention(s) pertain to heat exchanger elements schematically illustrated in the following figures. EP’834 and EP’836 explicitly recite polymer films being provided on the perforated plate element, while EP’090 holds that “[a]ccording to the inventions, the polymer is supplied as a dispersion”; see paragraph [0016].

The parties apparently also discussed the so-called extensions of the first patent. The importance to safeguard a filing date well before publication of the first application (EP’090) was apparently discussed, too. But the plaintiff did not trust the defendant to do so. Therefore, on 19 July 2013 he filed US 2013/269906 A1 on his own. Note that the two applications in suit were filed only later, i.e. 22 July 2013.

For the corresponding PCT applications WO’544 and WO’543 two additional inventors have been designated, i.e. defendant’s in-house patent attorney and the head of the R&D department.

This is only a rough overview of what appears to be a perfect mess. Interested in any further details? Plaintiff’s writ is available in its entirety from the EPO online files:

Download (PDF, 1.69MB)

Proceedings at the EPO are currently stayed on request of the plaintiff, in both cases.

In parallel main proceedings (O2015_009; no publication yet), plaintiff essentially requests that both patent families are to be assigned to him; and that the designations of the two additional inventors are to be withdrawn. As an interim measure, plaintiff essentially requested to impose a ban on defendant’s authority to dispose of the applications in suit.

Now, what did the defendant say? Interestingly, the decision holds that plaintiff’s detailed and well documented allegations remained essentially undisputed on the merits. The improper assignment of EP’090 did the rest to establish a certain risk / lack of due care if authority over the applications in suit remained with the defendant. Finally, the interim measures were held proportinate: defendant himself submitted that no transfer, granting of rights or amendments to the applications in suit was envisaged. However, no unconditional and binding declaration was submitted. Consequently, interim measures were granted as requested.

This decision in summary proceedings has already become final.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”

Marcel RIENDEAU ./. Zehnder Group International AG

Subject(s):

  • Assignment action / Interim measures

Board of Judges:

  • Dr. Dieter BRÄNDLE (President; Single Judge)
  • Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— DECISION IN FULL  —

Download (PDF, 277KB)

— BE ON THE KNOW —

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Don’t ever forget the potential security for party compensation, foreign plaintiffs!

Case No. O2014_008 ¦ Decision of 05 March 2015 ¦ “Inammissibilità dell’azione per mancata prestazione delle garanzie per spese ripetibili”

The plaintiffs JHD Acquisitions SA and Thermoself SA had sued the defendants for assignment of two patent families, i.e. i) EP 1 896 343 B1 and CH 698 072 B1; and ii) CH 703 828 A2WO 2012/038819 A1 and nationalizations thereof.

One of the defendants is the inventor / registered proprietor of the aforementioned patents, i.e. Giuseppe Sarcinella — a former member of the board of Thermoself until 2011. The other defendant is Suricate SA. The patent families in dispute pertain to flexible container with built-in auto-heating or -cooling, e.g. for beverages. In this video of Thermaself, it is explained how such systems can be used for mulled wine:

Some similarities of the product presentations of Thermoself and Suricate are astonishing: Even the same icons are used; see below.

Sounds like an explosive mixture, doesn’t it? But no, the case did not even get under steam. JHD Acquisitions SA is a company incorporated in Panama. In view of this international context, the defendants requested that the plaintiff be obliged to provide security for the defendants’ costs (Art. 99(1) lit. a CPC) in the amount of CHF 75’000,–. The plaintiffs then argued that the rights in the patents had been resold to MPMC Intellectual Property SA (a company incorporated in Switzerland). This company would replace JHD Acquisition SA as a plaintiff, and the security for the defendants’ costs would thus have become moot. It did not work out that easy. The FPC held that the transfer of the position as a plaintiff had not been sufficiently established, and the security for defendants’ costs was fixed by the FPC to CHF 62’000,–.

Now, how to reduce that security? It depends on the value in dispute. Next, the plaintiffs tried to reduce the value in dispute to only CHF 30’000,–, since the patents had not yet generated any income and the defendants had acted in bad faith. Even though the plaintiffs had estimated the value in dispute to “at least” CHF 30’000,– in the writ, the FPC had already fixed the value in dispute to CHF 500’000,–. And, noteworthy, the plaintiffs had duly provided the accordingly calculated advance payment of court fees of CHF 25’000,–. Unsurprisingly, the FPC had no reason to reduce the value in dispute at this stage of the proceedings: It is not decisive whether the patents had already generated income or not; it rather is the potential interest of the parties that counts. And the alleged bad faith of the defendants can only be taken into consideration after examination of the case on the merits.

Finally, the plaintiffs did not provide the required security for the defendants’ cost, and the FPC consequently did not consider the case. Nevertheless, the court fee was set to CHF 20’000,–. Obviously, the case was cumbersome and time-consuming for the FPC:

A causa delle insolite modalità seguite dalle parti nel compiere gli atti processuali, per il Tribunale la causa è risultata impegnativa. Conclusioni manchevoli, confusione riguardo alla contemporanea introduzione di una causa presso il Tribunale d’appello di Lugano nonché riguardo alla rappresentanza della attrici e un atto inammissibile inoltrato dalle attrici hanno richiesto continui interventi da parte del Tribunale. A queste complicazioni si aggiunge anche il dispendio in rapporto con l’esame dell’invocata sostituzione di parte e con la richiesta di cauzione.

In the meantime, the decision has already become final.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_008 ¦ Decision of 05 March 2015 ¦ “Inammissibilità dell’azione per mancata prestazione delle garanzie per spese ripetibili”

(1) JHD Acquisition SA; (2) Thermoself SA

./.

(1) Giuseppe Sarcinella; (2) Suricate SA

Subject(s):

  • Costs: Party compensation

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)
  • Susanne ANDERHALDEN (First Court Clerk)

Representative(s) of Plaintiff:

  • Matteo and Luca BAGGI (Baggi)

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

Download (PDF, 124KB)

Gilead ./. AbbVie: Court ban partially lifted

Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

This is further to an earlier post in this matter.

Gilead's Harvoni
Gilead’s Harvoni

In brief, both the plaintiff Gilead Pharmasset LLC and the defendant AbbVie Inc. had filed patent applications on a combination of sofosbuvir and ledipasvir (marketed by Gilead under the tradename Harvoni), and Gilead had lodged an assignment action against AbbVie in main proceedings (O2014_013).  A block of the patent register had been ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.

In the meantime, the defendant was belatedly heard and the FPC now finally decided on the requested interim measures (Art. 265(2) CPC). And: The interim measures were upheld to a large extent, but examination and grant proceedings may now continue. Still, it will be highly interesting to see how the case will be decided on the merits in co-pending main proceedings.

However, also the present decision has some interesting procedural implications:

i)  SUBSTANTIATION BY REFERENCE TO WRIT

The plaintiff had filed the assignment action in main proceedings on the very same day as the request for interim measures. In order to avoid unnecessary repetition in the substantiation of the request for interim measures, the respective parts of the writ were incorporated by reference. The defendant argued that this was inadmissible. And indeed, the FPC held that global references to other documents are regularly not sufficient. But in the present matter, it was. The underlying facts in both proceedings are the same and the plaintiff’s allegations are thus evident. Under these circumstances, it would be an excessive formalism to insist on a complete repetition in summary proceedings.

ii)  UNCONDITIONAL RIGHT TO REPLY IN SUMMARY PROCEEDINGS

The defendant had filed his reply to the request for interim measures on December 22, 2014. The FPC then informed the parties that an exchange of further written submissions is dispensed with. In addition, the plaintiff was informed that any remarks on the defendant’s reply would have to be submitted in due course, and the FPC further held that remarks filed by no later than January 19, 2015 would be considered timely filed. Apparently, the plaintiff then filed very extensive remarks, along with two folders of exhibits. The defendant refrained from making any further remarks on the merits, but essentially argued that the new allegations were to be ignored by the court.

The FPC held that the plaintiff’s submission of January 2015 is to be considered as a submission made under the condition of the unconditional right to reply. With reference to the decision 4A_815/2014 (r. 3.2) of the Supreme Court, the FPC clarified that this decision has not ruled out submissions under the unconditional right to reply in summary proceedings, but rather only relativised its scope. Anyhow, the plaintiff’s submission was only considered inasmuch as it was occasioned by the defendant’s reply (analogous to BGE 4A_487/2014, r. 1.2.4).

iii)  BELATED SUBSTANTIATION OF A NOT EASILY REPARABLE HARM

Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). The plaintiff had argued in the initial request that three potential actions of the defendant could cause an irreparable harm, i.e. (1) an assignment of the patent applications to a third party; (2) the granting of rights (licences or pledge); and (3) changes to the contents of the applications (Art. 51 and 64 PatR).

However, the plaintiff was silent on a not easily reparable harm that could come along with a continuation of the examination and grant procedure as such. The FPC took note that the plaintiff presented arguments in this respect for the first time only in the submission of January 19, 2015. But the FPC held that this was belated and did not consider those arguments any further.

In sum, the FPC thus partially lifted the ban on AbbVie’s patent applications, and the examination and grant proceedings of CH 707 029 and CH 707 030 may now continue. As to the remaining potential actions (1)-(3) outlined above, the defendant basically accepted the request for interim measures: The defendant confirmed to the court that he did not even think of any of these actions. Thus, the FPC upheld the interim measures to that extent.

iv)  AMOUNT IN DISPUTE

The court fee depends on the amount in dispute. Contrary to Art. 221(1) lit. c / Art. 219 CPC the plaintiff did not indicate the amount in dispute for the summary proceedings. In main proceedings, the plaintiff estimated the amount in dispute to “exceeding CHF 1m”. The defendant estimated the amount in dispute (for the main proceedings) to “exceeding CHF 10m”. All this did not help much to figure out the actual amount in dispute in summary proceedings. However, the defendant had requested a security of CHF 5m in case the ban with respect to the examination and grant proceedings would have been upheld. The FPC took this as a sufficient indication of the amount in dispute and thus fixed it to CHF 5m (BGE 92 II 62, r. 3). This results in a court fee of CHF 30’000,– (which is moderate in view of the value in dispute; see CostR-PatC), provisionally borne by the plaintiff (still subject to the outcome in main proceedings).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

Gilead Pharmasset LLC ./. AbbVie Inc.

Subject(s):

  • Interim measures without hearing the defendant
  • Interim measures
  • Transfer of patent application

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

Download (PDF, 244KB)

Litigation on combination of sofosbuvir and ledipasvir reaches Switzerland

Gilead Pharmasset LLC ./. Abbvie Inc.

Case No. S2014_008 ¦ Decision of 28 October 2014 ¦ “Superprovisorische Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

— THE DECISION IN A NUTSHELL —

Both Gilead Pharmasset LLC and AbbVie Inc. hold patent applications on the combination of the sofosbuvir and ledipasvir for the treatment of hepatitis C. This combination is marketed by Gilead under the tradename Harvoni™. Gilead has sued AbbVie for assignment of their Swiss patent applications. In first place, a block of the register for these patent application was ordered as an interim measure.

— THE DECISION IN MORE DETAIL —

This decision pertains to new pharmaceuticals for the treatment of hepatitis C.

1.  BACKGROUND

Undisputedly, sofosbuvir has been a breakthrough in the treatment of this widespread disease. It is a ribonucleotide analog inhibitor of the RNA-dependent RNA polymerase of hepatitis C virus (HCV).

Sofosbuvir
Sofosbuvir (PSI-7977)

Sofosbuvir causes chain termination by competing at the triphosphate level with natural nucleotides for incorporation into elongating RNA. The triphosphate serves as a defective substrate for the NS5B protein (which is the viral RNA polymerase), and thus acts as an inhibitor of viral RNA synthesis; see Antimicrob Agents Chemother. 2014 Jul; 58(7): 3636-45.

Way of acgtion of sofosbuvir
Way of action of sofosbuvir (by Anypodetos, via Wikimedia Commons); click on image to enlarge.

Sofosbuvir has received the FDA’s Breakthrough Therapy Designation and has been marketed since 2013. Compared to previous treatments, sofosbuvir-based regimens are reported to provide a higher cure rate, fewer side effects, and a two- to four-fold reduced duration of therapy.

In October 2014 a combination of sofosbuvir with the viral NS5A inhibitor ledipasvir was approved by the FDA.

Ledipasvir
Ledipasvir (GS-5885)

The combination of sofosbuvir and ledipasvir is marketed by Gilead under the tradename Harvoni™; see also the Harvoni™ patient information. It is reported to provide high cure rates in people infected with genotype 1 (the most common subtype in the U.S., Japan, and much of Europe).

Principal display panel of Harvoni™
Principal display panel of Harvoni™; click on image to enlarge.

Well, and here we are at the very core of this dispute: The rights in the invention of a combination of sofosbuvir and ledipasvir. Some indication of this issue is already contained in Thomson Reuters’ report to the WHO on the patent situation of sofosbuvir (see Patent 2, p. 16-17), the respective report on ledipasvir (see the Note in the Summary on p. 11) and newsfeeds such as e.g. Knowledge Ecology International or Biospace.

2.  WHO ACTUALLY INVENTED IT?

This question will be dealt with in co-pending main proceedings (O2014_013). Both parties had filed patent applications on this combination of drugs. The present decision only deals with a block on the register as an interim measure (see below). However, the plaintiff exhaustively argued on the merits of his rights in the invention, in order to get the block on the register issued. And, indeed, it was issued even without hearing the defendant beforehand.

The plaintiff essentially argued as follows:

As the legal successor of Gilead Sciences, Inc., Gilead Pharmasset LLC owns all rights and interest in this invention that is subject of patent applications (for the assignment see the request for a change under R. 92bis PCT and the corresponding notification issued by the WIPO). An outline of this patent family is shown below. Claim 3 of WO 2013/040492 A2 is directed to the combination of sofosbuvir (referred to as “compound 10”) and ledipasvir (referred to as “compound 6”).

Priority applications filed in the U.S.:
#1
Sep 16, 2011
61/535,885
#2
Nov 18, 2011
61/561,753
PCT application claiming these priorities:
filed
Sep 14, 2012
PCT/US2012/055621
pub’d
Mar 21, 2013
WO 2013/040492 A2

Gilead Sciences, Inc. had acquired Pharmasset LLC in January 2012, incl. the rights to sofosbuvir (PSI-7977). On the other hand, ledipasvir had been developed in-house at Gilead. Gilead’s first priority application had been filed on September 16, 2011 (at a time when a takeover bid for Pharmasset LLC had already been placed), and this application already included the combination of sofosbuvir and ledipasvir (GS-5885) for the treatment of HCV (in particular of genotype 1) for twelve weeks, with or without the further antiviral agent ribavirin, but in any case without interferon. Thus, the plaintiff had been in possession of the invention already on September 16, 2011.

The defendant’s patent applications are outlined below, in chronological order. The two Swiss patent applications that are litigated here are given in the last line. There are two series of applications, one with and one without the yet further antiviral agent ribavirin.

w ribavirin
w/o ribavirin
Priority applications filed in the U.S.:
#1
Oct 21, 2011
61/550,352
reverse phone lookup ,360″ href=”http://www.patentlitigation.ch/wp-content/uploads/2014/12/us_61_550_360.pdf” target=”_blank”>61/550,360
#2
Nov 21, 2011
61/562,181
61/562,176
#3
Jan 17, 2012
61/587,225
61/587,197
#4
Feb 17, 2012
61/600,276
61/600,468
#5
Apr 03, 2012
61/619,870
61/619,883
#6
Jun 06, 2012
61/656,251
61/656,253
#7
Oct 10, 2012
61/711,830
61/711,793
PCT applications claiming these priorities:
filed
Oct 19, 2012
PCT/US2012/061075
PCT/US2012/061085
pub’d
Apr 25, 2013
WO 2013/059630 A1
WO 2013/059638 A1
Nationalised in Switzerland:
nat’d
Jan 13, 2014
CH 707 029
CH 707 030

As can be seen, the defendant had filed the first priority application on October 21, 2011, i.e. only after the plaintiff’s first priority application of September 16, 2011. Ledipasvir as such is not referred to by the defendant in his first priority application, but rather only the identifier GS-5885. Neither the chemical structure is given, nor the specific combination of GS-5885 and sofosbuvir. The plaintiff points at two peculiarities in the subsequent time line of the defendant’s priority filings:

First, the plaintiff had mentioned the combination of GS-5885 and sofosbuvir for the first time in an investor phone conference on February 02, 2012. However, the structure of GS-5885 had not been made publicly available. About two weeks later, the fourth priority applications had been filed and disclose the specific combination of sofosbuvir and GS-5885 for the first time in the series of priority applications.

Second, only the sixth priority applications of the defendant (filed June 06, 2012) disclose the structure of ledipasvir / GS-5885. This is about six weeks after the plaintiff had made the structure of GS-5885 publicly available for the first time on April 18, 2012 at the 25th International Conference on Antiviral Research in Sapporo, Japan. The defendant does not rely on clinical data in the patent applications, but rather used computer models to predict the advantageous combinations of drugs.

3.  NOW, WHAT HAS BEEN DECIDED?

Both parties are domiciled in the U.S.; competency for interim measures is thus governed by Art. 10 IPRG. The requested interim measures aim to preserve the status quo for as long as the assignment suit has not yet been decided in co-pending main proceedings (O2014_013). In main proceedings, the courts of Switzerland have jurisdiction (Art. 109(1) IPRG; Art. 29 PatA). Moreover, the requested interim measures (block of the register) are to be executed in Switzerland. Competency of the FPC is thus given, and Swiss law is to be applied (Art. 110(1) IPRG).

Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). Prima facie evidence is sufficient. Further, a certain urgency must be given and the requested interim measures must be proportinate. The FPC held that all these prerequisites were fulfilled in the present matter. The block of the register was ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.

It remains to be seen how the defendant defeats the allegations. The defendant will now belatedly be heard and the FPC will then finally decide on the requested interim measures (Art. 265(2) CPC).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_008 ¦ Decision of 28 October 2014 ¦ “Superprovisorische Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

Gilead Pharmasset LLC ./. AbbVie Inc.

Subject(s):

  • Interim measures without hearing the defendant
  • Transfer of patent application

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • none yet

— FULL TEXT OF THE DECISION —

Download (PDF, 210KB)

Assignment action of GSK ./. Novartis

Case No. O2013_004 ¦ Order of 28 October 2013 ¦ “Streitwert für Gerichtsgebühren bzw. Parteientschädigung”

This assignment action was filed already back in March 2010. In December 2011, the matter had been transferred from the Civil Court Basel to the FPC, on request of the plaintiff. In reconsideration of its decision to transfer the case, the Civil Court Basel (tried to) set aside its decision, but later on held that it was no longer competent to do so. The defendant appealed this decision to the Supreme Court, but the Supreme Court did not consider the appeal since the Civil Court Basel is no higher cantonal court (Art. 75(2) FCA). Instead, the Supreme Court referred the case to Basel’s Court of Appeals for further consideration. Finally, the Court of Appeals Basel transferred the case to the FPC — again. The FPC dismissed the proceedings initially received from the Civil Court (O2012_009) and opened the present proceedings that had been transferred from the Court of Appeals. Here we are, finally.

In parallel, there were arbitration proceedings between the plaintiff and a connected undertaking of the defendant, pertaining to contractual issues.

1.  Background of the case

SyringeThe decision is published in anonymised form, on request of the defendant (cf. r. 5). However, the case made me nosy for at least two reasons. First, the annual turnover generated with the vaccine sold by the plaintiff and manufactured in accordance with the patent is noteworthy. It generated an annual turnover of GBP 192M in 2011, and sales increased by 25% to GBP 238M in 2012. Thus, it must be one of the top selling vaccines. Moreover, the plaintiff and a connected undertaking of the defendant are tied in a supply agreement (cf. r. 5).

Scrabbling this out, it becomes evident that the sales figures perfectly match with Boostrix® and, thus, the plaintiff is GlaxoSmithKline (cf. pages 8 and 58 of the GSK Annual Report 2012).

Boostrix

The patent family concerned is based on WO 2008/020328 A2. From the EPO file wrapper of EP 2 073 841 (a national phase application of WO 2008/020328 A2), even the writ of 29 March 2010 can be derived: Prosecution is currently stayed on request of the plaintiff, and the writ had been filed in support of the request to stay the EPO proceedings. From the writ, it becomes clear that the connected undertaking of the defendant involved in the production of Boostrix® is Novartis Vaccines and Diagnostics GmbH (Marburg, Germany). Evidently, Novartis came into play when it had taken over the former Chiron Behring GmbH & Co. in 2005 (now: Novartis Deutschland).

From the writ, it can be concluded that the competing product Td-Pur® of the defendant does not make use of the manufacturing method according to the patent family in suit.

Td-pur

2.  It’s all about money

Initially, both parties had agreed “preliminarily” on a value in dispute of CHF 1M (cf. e.g. #5 of the writ). However, the FPC fixed the value in dispute to CHF 4M with order of 07 March 2013 in accordance with Art. 91(2) CPC since the information the parties provided in this respect were manifestly incorrect. An advance payment of court fees in the amount of CHF 100’000.– was imposed on the plaintiff accordingly; Art. 1 CostR-PatC. Thereafter, proceedings were stayed on request of both parties until 30 June 2013.

Next, the defendant accepted the plaintiff’s claim on 26 June 2013 (apparently in view of an unfavourable ruling in parallel arbitration proceedings pertaining to the supply contract); see the earlier post in this matter. However, the defendant requested that the court fees and the compensation of the plaintiff be fixed in accordance with a value in dispute of only CHF 1M.

In reply, the plaintiff requested that the value in dispute be fixed to “exceeding” CHF 5M. Moreover, costs for legal representation of CHF 315’781.50 and an additional CHF 79’391.– for costs incurred by the assisting patent attorney were requested to be awarded in full.

The parties were summoned to a hearing scheduled 26 September 2013 in order to provide their final statements in this respect.

The FPC held that it is only possible to bring an action for an unquantified debt when it is impossible or unreasonable to quantify the amount of the debt at the start of the proceedings; Art. 85(1) CPC. That was not the case here. Instead, the plaintiff had apparently estimated the value in dispute at the lower end only in view of the unforeseeable peculiarities of the formerly applicable civil procedure code of Basel. The plaintiff presented arguments in favour of a much higher value in dispute, based on the sales figures given hereinbefore. Additionally, it was referred to the parallel arbitration proceedings where the plaintiff had estimated the value in dispute to at least USD 5M. This was not appreciated by the FPC. The FPC rather held that the plaintif had the underlying facts at hand already at the very beginning of the proceedings. It cannot be tolerated in view of the good faith principle that a party aims to increase the value in dispute when success on the merits of the case is within reach:

Die Argumente und Überlegungen, welche die Klägerin im Nachhinein anführt, […] hätte sie bereits bei Klageeinleitung vorbringen können. […] Aufgrund ihrer heutigen Vorbringen erstaunt es geradezu, wie die Klägerin überhaupt auf einen Streitwert von lediglich CHF 1 Mio. gekommen ist, […]. Es ist somit vielmehr davon auszugehen, dass die Klägerin den Streitwert aus prozesstaktischen Gründen bewusst tief ansetzte, weil — wie sie selber vorbringt — sie ein Unterliegen aus rein prozessualen Gründen aufgrund der alten Basler Zivilprozessordnung nicht habe ausschliessen können. Damit wollte die Klägerin das Risiko allfälliger sie treffender Kosten mindern. Es kann nicht angehen, dass die Klägerin nun im Wissen um den für sie positiven Prozessausgang für die Bemessung der Parteientschädigung den Streitwert auf CHF 5 Mio. übersteigend beziffert mit einer Begründung, deren ihr zugrunde liegende Tatsachen bereits vor Prozessbeginn bekannt waren. Ein solches Verhalten ist aufgrund der Pflicht der Parteien, im Verfahren nach Treu und Glauben zu handeln (Art. 52 CPC), nicht zu schützen.

Thus, the FPC fixed the compensation for legal representation of the plaintiff on the basis of only CHF 1M as a value in dispute. Since neither a main hearing had been scheduled nor a procedure of taking evidence had been necessary, the FPC did only award CHF 50’000,– (N.B. instead of CHF 315’781.50 as requested); Art. 32 and 33 PatCA, Art. 4 and 5 CostR-PatC. Some deductions were made to the requested compensation for the assisting patent attorney in view of costs incurred in the parallel arbitration proceedings; CHF 60’556.50 were awarded instead of the requested CHF 79’391.–.

Despite the elevated value in dispute, actual court fees at the FPC were fixed to only CHF 30’000,– since proceedings at the FPC did not get under steam on the merits at all. The remainder of the advance payment was refunded to the plaintiff.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_004 ¦ Order of 28 October 2013 ¦ “Streitwert für Gerichtsgebühren bzw. Parteientschädigung”

GlaxoSmithKline Biologicals SA ./. Novartis AG

Subject(s):

  • Value in dispute
  • Ownership

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

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