Tag: Assignment action

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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

Download (PDF, 119KB)

—

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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].

Figures EP’090
Figures EP’834 (EP2)
Figures EP’836 (EP3)

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  —

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— 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 A2, WO 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)

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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)

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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)

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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

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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:

Download (PDF, 130KB)

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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:

Download (PDF, 20KB)

 

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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)
Posted on

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):