Tag: Basys

Posted on

Schöck ./. Basys: A first in many aspects

Reading time: 12 minutes
DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of plaintiff, Schöck Bauteile.

Case No. O2020_017 | (Partial) Judgment of 17 August 2022 | ‘Normalkraftanschlüsse’

—

WHAT YOU NEED TO KNOW

Local standards may well be part of the common general knowledge, but it is left undecided whether this also applies to standards of other countries. →

The sequence of auxiliary requests (and the validity attacks against them) does matter. Lower-ranking requests are not and must not be examined when a higher-ranking request is successful. →

The judgment rules on the existence of a prior user right that does not extend to the attacked embodiment. →

The FPC for the first time ordered that a written warning be issued with products sold, to prevent patented use of it. →

Information and accounting has to be provided for all products sold. Those having been used by customers in a non-infringing manner will be sorted out later in the second stage of the proceedings, on request and as to be evidenced by defendant. →

Explicitly undisputed expenses for the assistance of patent attorneys can be awarded in full. →

—

Schöck’s logo

As reported earlier on this Blog here, Schöck and Basys are litigating over certain construction elements. Schöck asserted infringement of EP 2 455 556 B1 (cf. EPO Register and Swissreg) and EP 2 455 557 B1 (cf. EPO Register and Swissreg).

Basys’ logo

The attacked embodiments are the so-called ‘Normalkraftanschlüsse’ of types Basycon N, UZ and Seismolock.

In a nutshell, the (partial) judgment of 17 August holds that EP 556 as limited inter partes is valid and infringed. On the other hand, it is held that Basys has a prior user right under EP 556 for certain products (in simple terms, with a rod as a pressure distribution element) that are not covered by the injunctive relief of the operative part of the judgment (with a plate as a pressure distribution element). EP 557 is held invalid. See the summary on validity in ¶71 of the judgment.

Basys’ appeal is currently pending at the Supreme Court, which is why I will not make a deep dive into the matter right now. Still, the judgment has quite some interesting aspects on a general level.

Clarity of requests for injunctive relief

Clarity of requests for injunctive relief is often a big deal. There is always room for argument that the wording does not allow for mere factual inspection in order to decide whether sth is covered by the prohibition or not (BGE 142 III 587, r. 5.3; BGE 131 III 70, r. 3.3). The judgment holds that it is fully sufficient when terms are defined / construed in the reasons of the judgment, not necessarily in the operative part. It is not the first time that the FPC approached the matter in this way (see O2016_009, r. 54), but it’s a good reminder:

Since claim construction in judgments of the FPC became more and more detailed and systematic over the years (which is good!), it may well be that this will also lead to less discussions in written proceedings about clarity of the requests for injunctive relief.

claim construction

EP 556 requires a non-positive connection of certain elements (in German: ‘kraftschlüssig’). The attacked embodiment is welded. At first glance, one might think that the claimed feature is not fulfilled: In joining technology, welding is a typical example of an integral joint (in German: ‘stoffschlüssig’). Not so in the field of technology of EP 556 where the term is apparently used differently, i.e., in the sense of enabling the transmission of forces. Even a dependent claim included welding in a list of examples of non-positive connections.

Common general Knowledge of the skilled person
PHOSITA w CGK

In the assessment of obviousness, it is key to establish that the skilled person would (not could, you know) have combined two (or more) teachings of the prior art in order to come up with the alleged invention. The beauty of the common general knowledge of the skilled person in this respect is that the skilled person has it at his immediate disposal (sometimes referred to as ‘geistiges Rüstzeug’); no need to establish why he would have looked out for it in the expectation of some advance. This is why patentees and defendants typically disagree about what is part of the common general knowledge.

There are some interesting considerations in the judgment about how standards fit in the concept of common general knowledge. While a Swiss ‘Wärmebrückenkatalog‘ (2002; compiled based on numerous Swiss SIA standards) is considered to be part of the common general knowledge, the judgment explicitly leaves open whether the same would hold true for foreign stardards such as the German ‘DIN 4108 Beiblatt 2‘ (the most recent version of 2019 is not available free of charge; an older version of 2004 is available on the internet, e.g., here). In particular, the judgment holds that one would have to convincingly argue why a skilled person would consider foreign standards in the construction industry which is heavily influenced by national peculiarities.

The most interesting aspects in judgments are frequently the ones which remain undecided. This one is no exception. Can the common general knowledge really depend on where the skilled person is based? I don’t think so. The person having ordinary skill in the art is a legal fiction — without any nationality or place of business. Likewise, I feel that the common general knowledge of that person cannot depend on his place of business. Else, the German part of a Europen patent might be invalidated in view of a German standard that is part of the common general knowledge; and the Swiss counterpart is held valid because the skilled person has no idea about German standards and the Swiss standard is silent about the relevant aspect(?). This feels somewhat strange to me.

The cascades of Requests and attacks do matter

As mentioned earlier, two patents are at stake, i.e., EP 556 and EP 557. They were both held invalid as granted, but EP 556 was held valid according to the first auxiliary request, a verbal limitation inter partes.

the Porsche way

Interestingly, the judge-rapporteur had put the cart before the horse in his expert opinion and held that a further subordinate verbal limitation was invalid. He concluded that this applied to the broader, higher ranking first auxiliary request, too.

The judgment holds in no uncertain terms that this is improper. The higher ranking request has to be assessed first, and when the attacks against this request are unsuccessful, the court has to stop there. Notably, the attacks against the various request were based on different combinations of prior art references.

Accordingly, the judgment is silent about the further subordinate request. We cannot know what the judges, incl. the judge-rapporteur, thought about it on the merits after the parties had submitted their respective statements in reply to the expert opinion.

Prior user right

The judgment holds that defendant asserted a prior user right under Art. 35 PatA with words to that effect (‘sinngemäss’). I did not look up what exactly has been pleaded. But, clearly, defendant did not formally request that the FPC rules on the prior user right. The judgment holds (with reference to SHK PatG in fn 68) that the prior user right, as an objection (‘Einwendung’), has to be considered ex officio. Note that the reference cited in fn 68 had not yet been this clear about the prior user right being a plea in defense (‘Einrede’) or an objection (‘Einwendung’; «[…], wobei mindestens ein Teil der Lehre im Mitbenützungsrecht nicht eine Einrede, sondern eine Einwendung erkennt, die bei entsprechendem Sachvortrag von Amtes wegen (iura novit curia) zu berücksichtigen ist.»).

Notably, the prior user right is limited to embodiments with a force distributing rod — but all requests for injunctive relief require that the force distributing element is a plate, i.e., not a rod.

written warning to prevent patented use

Defendant is not prevented from future sales of the relevant construction element as such: Their use in horizontal orientation is not covered by the injunctive relief. But for their use in vertical orientation, the judgment holds that a written warning  is suitable, necessary and proportionate to prevent or reduce the risk of infringing use; ¶83. This also applies retroactively to commercial customers that have already been provided with the construction elements; ¶85. This is a first in the case-law of the FPC, to the best of my knowledge.

accounting

In view of the advertisements for use of the relevant construction elements in the (infringing) vertical orientation, defendant has been ordered to provide information and accounting for all construction elements that had been sold — irrespective of how they were actually used by customers; ¶87. It will be up to the defendant in the second stage of the proceedings to provide evidence for the share of construction elements that were used in a non-infringing horizontal orientation (if any), to reduce the fincancial exposition.

necessary expenses

Based on a value in dispute of kCHF 500, the court fee was set at kCHF 40; Art. 1 CostR-PatC. Likewise, the compensation for legal representation was fixed at kCHF 40; Art. 5 CostR-PatC.

The interesting bit is about the necessary expenses for the assisting patent attorneys. Plaintiff incurred costs of about kCHF 150 for the assisting patent attorneys. Defendant incurred essentially the same costs for their patent attorneys — and accordingly did not dispute plaintiff’s costs even though they exceeded the costs for legal representation as awarded in accordance with the tariff by almost a factor of four.

Accordingly, necessary expenses were awarded as they had been incurred (while still taking into account the FPC’s finding that plaintiff only succeeded by 2/3).

I wonder: Why not contesting the necessary expenses of the counterparty only insofar as they exceed the own expenses (if that is the case); or not at all? If you are confident enough to succeed, this may well be a feasible approach to recollect the actual expenses incurred — at the risk that when you are wrong you may have to refund a lot more to the counterparty than if you had disputed.

Btw, Mark SCHWEIZER mentioned in a recent publication on costs of proceedings at the FPC in sic! 9/2022 that experienced counsel would submit invoices only to the extent that is expected refundable.

https://www.documentcloud.org/documents/23166615-sic_9-22_-_362#document/p4/a2163081

Frankly, I am not aware of such practice, and I have never done that myself. In view of the present decision, such practice might even cut you off from a much higher refund if the counterparty does not dispute the expenses — which you cannot know.

Word of the year

I have learned about the ‘Word of the Year’ award at the annual VESPA evening seminar a few weeks ago. This year’s winner is:

Gesamtschau

Word of the Year

It’s a German verbiage that cannot be nicely translated without losing its dusty patina. ‘Holistic view’ might come close, but is much too modern. ‘Overall’ might also be okay, but does not reflect the huge complexity of a ‘Gesamtschau’. Anyway, I trust you get the gist.

Now that I have been made aware of this fun fact, I had to check. And, you guessed it: The ‘Gesamtschau’ also appears in this judgment; even twice (p. 39, 65). Not bad!

✍ MW

—

BIBLIOGRAPHY

Case No. O2020_017 | (Partial) Judgment of 17 August 2022 | ‘Normalkraftanschlüsse’

Schöck Bauteile GmbH
./.
Basys AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Markus MÜLLER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

—

—

(PARTIAL) JUDGMENT

—

PATENTS IN SUIT

EP 2 455 556 B1:

–

EP 2 455 557 B1:

—

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Posted on

Schöck and Basys twisting things

Reading time: 5 minutes

Case No. O2020_017 | Hearing of 11 May 2022

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the Plaintiff.
Schöck’s logo

Schöck asserts infringement of EP 2 455 556 B1 (cf. EPO Register and Swissreg) and EP 2 455 557 B1 (cf. EPO Register and Swissreg). The attacked embodiments of Basys are the so-called ‘Normalkraftanschlüsse’ of types Basycon N, UZ and Seismolock.

Basycon ‘Normalkraftanschluss’ of type N (illustration taken from the FPC‘s tweet)

According to the announcement of the hearing, Basys argues that the patents were insufficiently disclosed and not novel or obvious in view of no less than 14 documents in total (of which the following are mentioned in the announcement: EP 1 072 729 A1, EP 1 881 119 A2, DE 87 00 301 U1, DE 197 05 698 A1, CH 678 076 A5, DE 200 08 570 U1, CH 690 966 A5, DE 30 05 571 C2, a Basycon Flyer of Jan 2005 and a Basycon catalogue of 2008). Further, the patents were not infringed when construed correctly.

At the beginning of the hearing, Basys presented a sample of an attacked embodiment; Art. 168 para. 1 lit. c CPC. The various features of the sample were briefly discussed, and even some manual tests were made on the sample, by both parties. The President closed this part of the hearing with a smirk:

Oder möchten Sie sonst noch etwas verbiegen?

In the first round of pleadings, Schöck asserted various violations of the principle of party disposition in the judge-rapporteur‘s expert opinion. Further, Basys’ comments on the expert opinion contained inadmissible novae that must not be relied on. On the merits, Schöck focused on admissibility of amendments in general, and intermediate generalisations in particular. The judge-rapporteur had apparently held that the omission of the rectangular shape of a plate in an auxiliary request amounts to an intermediate generalisation. But what does «rechteckig hochkant orientiert» in [0045] and [0047] of EP 556 actually mean: a rectangular shape or a rectangular orientation of the plate? With reference to T 1471/10 (r. 3.3.2 et seq.), Schöck held that the feature could well be omitted because there was no indication whatsoever in EP 556 of the relevance of the form of the plate; and the orientation of the plate is already contained in the claim language to the extent necessary.

With respect to novelty and non-obviousness, Schöck addressed a photography on page 1 (similar to this one) and a schematic illustration on page 3 of the Basycon Flyer 2005; and EP 792 (not mentioned in the announcement).

Basys‘ logo

After a 15 min break, Basys’ pleadings began at 11:20 hrs. Basys rebutted selected arguments of Schöck’s latest submissions. Some arguments referred to the skilled person; on the funny side, Basys held that the skilled person cannot be willing and able to understand unclear features of EP 556 on the one hand, and be dull-witted in the assessment of the prior art on the other hand.

An interesting discussion circled around whether (or not) a specific attack (with a certain combination of prior art) of a sub-eventualiter inter partes limitation of a patent can be considered by the court ex officio for higher-ranking requests.

After a lunch break from 12:30 hrs to 13:30 hrs, Schöck and Basys made their respective second submissions, until 14:20 hrs. It appears that the actual expenses for patent attorneys were almost identical on both sides; but the parties disagreed on the responsibility for the costs.

No settlement discussions took place.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. O2020_017 | Hearing of 11 May 2022

Schöck Bauteile GmbH
./.
Basys AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Markus MÜLLER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

—

—

ANNOUNCEMENT

https://www.documentcloud.org/documents/21582344-o2020_017-informationhauptverhandlung_2022-05-11?responsive=1&title=1

—

PATENTS IN SUIT

EP 2 455 556 B1:

https://www.documentcloud.org/documents/21876401-ep2455556b1?responsive=1&title=1

–

EP 2 455 557 B1:

https://www.documentcloud.org/documents/21876402-ep2455557b1?responsive=1&title=1

—

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Posted on

How to interpret expressions stating a purpose in a patent claim

Reading time: 10 minutes

Case No. O2018_017 | Decision of 31 January 2020

Aschwanden’s logo

F.J. Aschwanden on the one hand, and acG Holding (Anita and Clément Gutzwiller) and Andreas (André) Robert on the other hand are litigating over validity of EP 2 475 827 in Switzerland. We had reported about the main hearing in this matter on this Blog here.

Basys’ logo

From the earlier case S2018_005 it is known that Basys is the exclusive licensee of EP 827; Aschwanden’s ‘Dura Box‘ line of products had been asserted to infringe EP 827.

EP 827 pertains to reinforcing elements that can be integrated in concrete structures in order to support recesses for conduits (water, electricity, etc.).

No suspension of proceedings / the judgment

Opposition proceedings are currently pending at the EPO, and the parties have been summoned for oral proceedings on 31 March 2020. One of the two opponents is F.J. Aschwanden, i.e. the plaintiff in the present case. The second opponent is Jordahl H-Bau AG. The latter has submitted the judgment to the EPO with letter of 18 February 2020.

The FPC may suspend proceedings, and in particular defer the judgment, where a final decision has not yet been taken in EPO opposition proceedings; Art. 128 lit. b PatA. The decision holds that the timeline is decisive. If a legally binding decision is to be expected soon by the EPO, it is justified in order to avoid contradictory decisions to suspend the national proceedings, or the judgment only. However, if it is likely to take longer for the EPO to reach a final decision, the constitutional right to an assessment within a reasonable period of time will prevail.

Defendant’s request to suspend proceedings had already been dismissed with order of 30 October 2019. The request at the main hearing to only suspend the judgment was unsuccessful, either. First, a delay of at least one year could hardly be considered acceptable for the plaintiff, in view of the constitutional acceleration requirement; Art. 29(1) FC, Art. 6(1) CPHR. Second, the decision holds that there is not even a risk of conflicting decisions since the claims for which the Opposition Division provisionally indicated allowability are not to be considered in the present proceedings; see below.

Belated claim amendment

The patentee / defendant had requested twice to maintain the patent in amended form: For the first time with the rejoinder, and for the second time in an even more limited form with the comment on the expert opinion of the judge-rapporteur. Clearly, the former was still timely filed, i.e. well before closure of the file. On the other hand, the latter was filed only after closure of the file. What is more, the patentee had submitted the very same claims in EPO opposition proceedings already well before the rejoinder was filed. The decision holds that the mere fact that the Opposition Division of the EPO indicated allowability of these claims (Auxiliary Request 2) with the summons to oral proceedings in no way justifies the belated submission of the claims in proceedings at the FPC.

On the merits

The decision extensively deals with claim construction on about five pages. Clearly, this facilitates the analysis of novelty and inventive step later on.

Neither claim 1 as granted nor claim 1 as amended with the rejoinder is held to be novel over Suzuki et al. (Nippon Steel Technical Report No. 96 July 2007: High Strength Deformed Bar-in-Coil «HDC800» for Shear Reinforcement of RC Beam with Web-opening) and JP 6-32280; an automated translation of the latter (which is actually not too bad) is available via the Global Dossier.


Claim 1 as granted (EN translation)

A Device for the reinforcement of concrete structures
B which, by means of inserted structural elements, bridges weakened zones
C which are produced by recessed parts
D and which transmits the forces
E wherein in addition to the conventional design of the reinforcement (11) originally calculated by the structural engineer
F and before the concrete is cast
G  the recessed parts are surrounded by at least one structural element
H the structural element (1) comprises at least one tension element (2) in the form of a straight tension rod, a bent rod or a frame
I which is connected at both ends to an anchoring
J at least one holder (4) is provided, which is connected to the tension element (2) or to the anchoring (3) or is formed by the tension element itself
K wherein a force model is formed by the structural element
L which reinforces the local shear behavior of the statics in the region of the recessed parts
M and thus improves the concrete structure weakened by the recessed parts by transferring the forces
N and reduces or eliminates the static weaknesses of the concrete structure caused by the recessed parts
O the tension element taking over shear, compression, transverse, tensile forces and / or bending moments
P wherein force-neutral zones are formed for the recessed parts by the force model
Q the structural element surrounds these force-neutral zones at least partly on two opposite sides
R and completely on a third side connecting the two sides
S the holder is arranged to hold the recessed parts in the force-neutral zone and the recessed parts are accommodated in the force-neutral zones

Claim 1 of the Auxiliary Request (EN translation), marked-up

A Device for the reinforcement of reinforced-concrete floorsstructures
B which, by means of inserted structural elements inserted into the reinforced-concrete floor, bridges weakened zones
C which are produced by recessed parts
D and which transmits the forces
E wherein in addition to the conventional design of the reinforcement (11) originally calculated by the structural engineer
F and before the concrete is cast
G  the recessed parts are surrounded by at least one structural element
H the structural element (1) comprises at least one tension element (2) in the form of a straight tension rod, a bent rod or a frame
I which is connected at both ends to an anchoring
J at least one holder (4) is provided, which is connected to the tension element (2) or to the anchoring (3) or is formed by the tension element itself
K wherein a force model is formed by the structural element
L which reinforces the local shear behavior of the statics in the region of the recessed parts
M and thus improves the concrete structure weakened by the recessed parts by transferring the forces
N and reduces or eliminates the static weaknesses of the concrete structure caused by the recessed parts
O the tension element taking over shear, compression, transverse, tensile forces and / or bending moments
P wherein force-neutral zones are formed for the recessed parts by the force model
Q the structural element surrounds these force-neutral zones at least partly on two opposite sides
R and completely on a third side connecting the two sides
S the holder is arranged to hold the recessed parts in the force-neutral zone and the recessed parts are accommodated in the force-neutral zones

The statements in the claim that indicate a purpose are the most crucial ones for the outcome of the case; see below.

Interpretation of expressions stating a purpose

The decision holds that according to the Supreme Court (122 III 81, r. 4b), in the case of a device claim (product claim), indications of purpose, effect or function do not normally have a restrictive effect on the scope of protection. Such statements generally are only to ease understanding. The situation is different if the disclosed use is not merely a statement of purpose, but already indicates the functional suitability of the device and its physical properties by way of explanation.

According to the practice at the EPO, on the other hand, the indication of a purpose in a device claim must in principle be interpreted such that the device is suitable for the specified purpose; see Guidelines F-IV, 4.13.1 and Case Law of the Boards of Appeal, 9th ed. (2019), I.C.8.1.5.

UPDATE 09 March 2020:

I only realized now that indications of a purpose had already been at stake in S2012_004 of 24 March 2012; see this Blog here. At that time, the FPC had applied the EPO’s approach without hesitation; see ¶8.

Anyway, the decision holds that the principles of interpretation of the Supreme Court and the EPO lead to same result: A known device prejudices the subject matter of a later claim if that known device was suitable for the purpose stated in the claim.

Even though it is a non-issue for the case at hand, I am still struggling with the reasons in 122 III 81, r. 4b.

Do you get it? I don’t.

In a claim directed to a «[d]evice for [doing x], wherein the device comprises [y and z]», how would I ever know whether the indicated purpose is only meant ‘to ease understanding’ («Verständnishilfe») or whether it defines ‘the functional suitability of the device and its physical properties by way of explanation’ («die funktionelle Eignung der Vorrichtung und deren körperliche Ausgestaltung erläuternd klarstellt»). Frankly, that doesn’t make much sense to me; it is the exact opposite of legal certainty. Anyway, the decision is almost a quarter of a century old. I would assume that the Swiss Supreme Court would nowadays assess the issue similar as the German Supreme Court did in the hn of Xa Zr 140 05 of 28 May 2009:

[Purpose features] regularly have the task of defining the subject-matter protected by the patent in such a way that it does not only have to fulfil the spatial-physical features recited in the claim, but that it must also be designed in such a way that it can be used for the purpose stated in the claim.

Well, this is it. Period.

UPDATE 12 March 2020:

The decision has not been appealed / is final now.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. O2018_017 | Hearing of 18 November 2019

F.J. Aschwanden AG

./.

  1. acG Holding AG
  2. Andreas (gen. André) ROBERT

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Natalia CLERC
    • Dr. Kurt SUTTER

Judge-rapporteur:

    • Natalia CLERC

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

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

Representative(s) of Defendant / Patentee:

    • Felix GRETHER (EBD)
    • Daniel MAIER (euromaier), assisting in patent matters

—

DECISION IN FULL

—

PATENT IN SUIT

—

EPO SUMMONS

—

EPO AUXILIARY REQUEST 2

—

RELATED CASE S2018_005


—

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Posted on

A patent that might need some further reinforcing elements

Reading time: 6 minutes

Case No. O2018_017 | Hearing of 18 November 2019

Aschwanden’s logo

F.J. Aschwanden on the one hand, and acG Holding and Andreas (André) Robert on the other hand are litigating over the validity of EP 2 475 827 in Switzerland.

Basys’ logo

From the earlier case S2018_005, it is known that Basys is the exclusive licensee of EP 827; Aschwanden’s ‘Dura Box‘ line of products (illustrated in the header image) had been asserted to infringe EP 827.

EP 827 pertains to reinforcing elements that can be integrated in concrete walls in order to support recesses for conduits (water, electricity, etc.). Opposition proceedings are currently pending at the EPO, and the parties have been summoned for oral proceedings on 31 March 2020. One of the two opponents is F.J. Aschwanden, i.e. the plaintiff in the present case. The second opponent is Jordahl H-Bau AG.

Noteworthy, the patentees have submitted two auxiliary requests in the EPO opposition proceedings on 16 January 2019, and for the second auxiliary request (AR2) the OD provisionally acknowledged at least novelty over the cited prior art in the interim assessment attached to the summons of 26 June 2019.

The hearing started with a somewhat odd interaction. As is customary, the people present for both parties were introduced by their respective lawyers. Mr Maier was referred to as their ‘patent representative’ (‘Patentvertreter’). The President raised his eyebrows and interjected with the question of whether Mr Maier was an admitted representative (‘zugelassener Vertreter’). Apparently, some phrasing in the briefs may have been understood as if Mr Maier identified himself as a patent attorney. Mr Maier immediately responded that this was a mistake, and that he was indeed not a patent attorney (‘Ja, das ist nicht ganz korrekt …’).

The hearing continued with a more substantial blow to defendant’s case. The President informed the parties that defendant’s further auxiliary requests (corresponding to the two auxiliary requests from the co-pending EPO proceedings) would not be admitted into the proceedings. Those requests could well have been submitted already with the rejoinder, but the defendants failed to do so. As a consequence, the court did not admit them into the proceedings; Art. 292 CPC. Note that the second auxiliary request (AR2) was the only one that was provisionally considered to be new over the cited prior art by the OD in the summons, and the judge-rapporteur’s expert opinion on the claim sets submitted before the closure of the file has apparently been rather negative for the patentee, in our perception of what has been discussed at the hearing.

Even though the further auxiliary requests had not been admitted into the proceedings, a substantial part of the pleadings was about the merits of those requests.

Interestingly, defendants requested to delay a judgment until after the EPO’s OD will have decided in the co-pending opposition proceedings. Defendants’ argument seemed premised on the expectation that the opposition division would maintain EP 872 in accordance with AR2. In that case (and, of course, when no appeal is lodged, or if the decision is affirmed by the Boards of Appeal), AR2 would become ex tunc the relevant claim set of EP 872.

As mentioned, AR2 was not admitted into the Swiss proceeding. Thus, so defendants, a conflicting judgment may be the result if the FPC found EP 872 invalid as the decision would be based on a claim set that had formally never been granted. Note that defendants only asked for the judgment to be delayed, but not for the proceedings to be suspended. Apparently, the latter had already been requested in the past but denied by the court.

Note that the Swiss PatA in no way precludes nullity actions while opposition proceedings are still pending, contrary to Art. 81 of the German PatA. The German Supreme Court did not make any difference between German and European opposition proceedings in this respect — but only in 2005, which was somewhat surprising to me; see X ZR 29/05. In Switzerland, nullity proceedings or the judgment may be suspendend while European opposition proceedings are ongoing; Art. 128 PatA. /MW

As always, the President asked the parties whether they were interested in settlement discussions. Both parties indicated that they would be very interested in a licensing agreement. However, the plaintiff stated that he was absolutely not going to pay for such a license, while defendants said that they would absolutely not give away a license for free. The President asked if they would at least listen to a proposal by the court, to which both parties responded affirmatively before the session closed.

Reported by Philippe KNÜSEL and Martin WILMING

—

BIBLIOGRAPHY

Case No. O2018_017 | Hearing of 18 November 2019

F.J. Aschwanden AG

./.

  1. acG Holding AG
  2. Andreas (gen. André) ROBERT

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Natalia CLERC
    • Dr. Kurt SUTTER

Judge-rapporteur:

    • Natalia CLERC

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

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

Representative(s) of Defendant / Patentee:

    • Felix GRETHER (EBD)
    • Daniel MAIER (euromaier), assisting in patent matters but not being a patent attorney
    • Hermann-Josef FLECK (Jeck & Fleck), representative of the patentee in EPO proceedings

—

ANNOUNCEMENT

—

PATENT IN SUIT

—

EPO SUMMONS

—

EPO AUXILIARY REQUEST 2

—

RELATED CASE S2018_005


—

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.