Schöck and Basys twisting things

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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

PATENTS IN SUIT

EP 2 455 556 B1:

EP 2 455 557 B1:

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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.

approaches 'purpose' features in pretty much the same way as the EPO.

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


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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


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