Beware of missing the right time for submitting evidence

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

1. Background of the case

The parties are anonymised in the present decision (B. GmbH ./. Z. SA). However, the underlying patent is identified (WO 2005/018848).

From a brief review of the patent family, the parties become immediately apparent. In the European phase of the aforementioned PCT application, proceedings are stayed on request of Benteler Automobiltechnik GmbH. This company had sued Z.A.T. Zinc Anticorrosion Technologies SA for partial assignment to co-ownership of the patent application in suit. The writ of 09 February 2009 is available online; it was annexed to the request for interruption of proceedings.

Note that the former applicant of WO 2005/018848 (DaimlerChrysler) had assigned the application to Z.A.T. Zinc Anticorrosion Technologies SA.

For more infomation, please check the file wrapper (online at the EPO).

2. Procedural aspects at stake

Ordinary exchange of written submissions was as follows (submissions with respect to the counterclaim are underlined):

Plaintiff Defendant
i) Writ
(09 February 2009)
ii) Answer ¦ Counterclaim
(29 May 2009)
iii) Reply ¦ Answer
iv) Rejoinder ¦ Reply
(28 February 2013)
v) Rejoinder*
(13 May 2013)

* expressly only commenting on the reply of the defendant of 28 February 2013.

With letter of 14 May 2013, the FPC informed the parties that the exchange of written submissions was finished. However, with letter of 23 May 2013 the plaintiff then expressed his surprise that he was given no further opportunity to comment on facts and evidence raised by the defendant in the rejoinder of 28 February 2013. In the plaintiff’s view, the defendant had denied the plaintiff’s right of action in the rejoinder of 28 February 2013 for the first time. “For the sake of completeness”, the plaintiff submitted assignment agreements signed by the respective inventors back in 2009. Note that the plaintiff had already named these inventors in the writ of 09 February 2009 (marg. no. 17 of the writ). The defendant requested that this submission of the plaintiff be held formally inadmissible; moreover, correctness on the merits was also denied.

First, the FPC held that the plaintiff’s submission of 23 May 2013 was no submission of new facts or evidence in the sense of Art. 229(1) lit. a or b CPC. In contrast, the plaintiff’s intention was obviously to comment on an aspect of the rejoinder of 28 February 2013.

With respect to the initial writ, the ordinary exchange of written submissions was concluded with the rejoinder of 28 February 2013. Only the rejoinder in the counteraction was outstanding, and the FPC accordingly had only set a time limit for this rejoinder. Nevertheless, the plaintiff had the mandatory right to also comment on the rejoinder of 28 February 2013 (“unbedingtes Replikrecht”); no time limit needs to be set by the Court (cf. BGE 138 III 252, r. 2.2; BGE 133 I 98, r. 2.2 and a memorandum of the Supreme Court). However, one has to act immediately in order to safeguard this right. Otherwise, it is deemed that the respective party has abstained from making a further submission. In the present matter, 2 ½ months had lapsed since the plaintiff was served with the rejoinder of the defendant. The FPC held that this was clearly not an immediate action being taken by the plaintiff. Consequently, the FPC excluded the plaintiff’s submission of  23 May 2013 (incl. the assignment agreements) from further consideration, as well as the defendants comments thereon.

As a sidenote, the FPC held that even an immediate comment on the rejoinder of 28 February 2013 would not have helped the plaintiff: The right in the invention had already been discussed in the writ of 09 Februar 2009, and the inventors were already named at that time. The defendant had contested these allegations already in his answer of 29 May 2009. Therefore, this was not a new issue raised only in the rejoinder of 28 February 2013 by the defendant.

Next, the parties will be summoned to the main hearing. The FPC stressed that the parties will then only be allowed to present new facts or evidence in the sense of Art. 229(1) CPC. In view of the above, the plaintiff will thus not be heard anymore with respect to the facts and evidence raised in his submission of 23 May 2013.

Reported by Martin Wilming

BIBLIOGRAPHY

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

Benteler Automobiltechnik GmbH ./. Z.A.T. Zinc Anticorrosion Technologies SA

Subject(s):

  • Patent law / Unfair competition

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

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Urgency of interim measures without hearing the defendant

Case No. S2012_009 ¦ Order of 12 June 2012 ¦ “Zuständigkeit für summarische Verfahren ausserhalb der exklusiven Zuständigkeit; keine besondere Dringlichkeit”

Hepp Wenger Ryffel AG / Martin WILMING is involved in this case on behalf of the plaintiff. No detailed comments on the merits will be made here. However, two legal aspects of this order may be of general interest:

First, the FPC held that its competency also extends to interim measures to be taken in cases of concurrent competency with cantonal courts (Art. 26(2) of the Federal Act on Invention Patents).

Second, the FPC expanded on the urgency of the case. If interim measures are requested without hearing the defendant (according to Art. 265 CPC), such request shall be made within one or two weeks after the plaintiff has taken note of the threat to be prevented. Seven weeks were found indicative of no outstanding urgency:

Hätte die Klägerin die Anordnung der Massnahme für so dringlich gehalten, dass keine Zeit für eine Anhörung des Beklagten bleibe, dann hätte sie das Massnahmebegehren auch umgehend – jedenfalls innert ein oder zwei Wochen – stellen müssen. Hat die [Klägerin] damit aber sieben Wochen zugewartet, dann ist sie offenbar selbst nicht von einer besonders dringlichen Angelegenheit ausgegangen, und deshalb ist es ihr nun verwehrt, genau diese zu behaupten.

The defendant was given an opportunity to make representations, in accordance with Art. 253 CPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_009 ¦ Order of 12 June 2012 ¦ “Zuständigkeit für summarische Verfahren ausserhalb der exklusiven Zuständigkeit; keine besondere Dringlichkeit”

(not identified) ./. (not identified)

Subject(s):

  • Patent / Utility model (Interim measures)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (not identified)

Claim dismissed for lack of right of action

Case No. O2012_010 ¦ Decision of 28 March 2012 ¦ “Aktivlegitimation”

The patent in suit (Swiss patent CH 683 963 A5; cf. Fig. 4 below for illustrative purposes) pertains to an implant which serves for the stiff connection of vertebrae of the spinal column:

O2012_010_-_CH683963A5_Fig_4

The application was filed in 1988 by the defendant. In addition to Mr. Robert Mathys (jun.), Prof. Dr. Max Aebi was identified as an inventor. Mr. Aebi had assigned his rights to the invention to the defendant. In 2006, the plaintiff sued the patentee with the Cantonal High Court of Grisons, arguing that the patent was obtained in bad faith, since the defendant should have known that Mr. Aebi was not entitled to assign his rights to the invention. The plaintiff inter alia requested the assignment of a share of 50% of the patent, and as an auxiliary request that the patent be revoked.

Mr. Aebi was an employee of the plaintiff under public law when the invention was made,. At that time, the University of Berne was not yet a legal entity, but only an administrative unit of the department of education of the Canton of Berne. The FPC held that the University of Berne had no right of action: It was not proven that when it finally became a legal entity in 1996, any rights to the invention under dispute were in fact transferred to the University. The claim was dismissed already for this reason.

Inventions made by professors at Universities were not regulated by law in the Canton of Berne at the filing date of the patent in suit. In contrast, it was the prevailing opinion at that time in Switzerland that inventions made by professors of Universities did not qualify as employee inventions under Art. 332 of the Swiss Code of Obligations. In consequence, the FPC held that there was no legal basis of the plaintiff’s claim that Mr. Aebi’s invention was an employee’s invention belonging to the University.

In addition, there was no evidence that the defendant should have had any doubt about Mr. Aebi’s entitlement to assign his share in the invention. To the contrary, there were indications that the University of Berne was not interested in patents at all at the time when the patent in suit was filed. In consequence, it was not proven that the patent owner acted in bad faith; any assignment action thus had to be filed within two years after grant (Art. 31 para. 1 of the Federal Act on Invention Patents). The right in the assignment action was forfeited.

In light of the above, the FPC also held that the plaintiff was not entitled to a nullity action pursuant to Art. 26 para. 1 lit. d of the Federal Act on Invention Patents: Since co-ownership of the defendant was not under dispute, the plaintiff alone was not entitled to such action anyhow.

In the meantime, the decision has become final.

Reported by Andreas WELCH

BIBLIOGRAPHY

Case No. O2012_010 ¦ Decision of 28 March 2012 ¦ “Aktivlegitimation”

Universität Bern ./. AO Technology AG (formerly Synthes AG Chur)

Subject(s):

  • Patent assignment (eventualiter: Nullity)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dipl. Masch.-Ing. ETH André Georges WERNER (Judge)
  • Dr. iur. Christoph GASSER (Judge)
  • Prof. Dr. iur. Daniel KRAUS (Judge)
  • Dr. iur. Christoph WILLI (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Universität Bern:

Representative(s) of AO Technology AG (formerly Synthes AG Chur):