Ever tried. Ever failed. No matter. Try again. Fail again. Fail better. (Until you win?)

Reading time: 7 minutes

Case No. 4A_500/2021 (Supreme Court) | Judgment of 31 January 2022 on appeal against O2020_001 (FPC) | Judgment of 9 June 2021

We have reported about the FPC’s first instance judgment in this patent infringement case between BD and Ypsomed on this Blog here. The Supreme Court now confirmed the FPC’s finding of invalidity of the patent in suit for added matter.

Intermediate Generalisation: EPO approach

The feature at stake was held to be unallowably amended by way of an intermediate generalisation. The FPC followed the strict approach of the EPO in this respect. BD apparently argued on appeal that this approach is too strict, and that e.g. the Supreme Court of Germany takes a more liberal approach (essentially with reference to BGH X ZR 6/18 — Bausatz; see my slides about this case from an INGRES seminar of 1 Feb 2021).

The Supreme Court appreciates that certain national courts (such as the German Supreme Court) might well approach the issue of intermediate generalisation from a different angle (nicely put). However, it is held in no uncertain terms that this is no good reason to deviate from the only recently clarified Swiss practice (4A_490/2020BGE 147 III 337) which is in line with the case-law of the Boards of Appeal of the EPO. What is decisive is what the skilled person can undoubtedly derive from the application as filed.

Now, that’s a clear statement. No deviation from the EPO’s practice re allowability of amendments in Switzerland to be expected any time soon.

Anyway, I truly feel that one cannot simply pick and choose isolated elements from different jurisdictions. It may well appear that the German practice is more liberal with respect to allowability of amendments. But this is, in my perception, not due to a fundamentally different approach. I feel the real difference is the level of skill of the person having ordinary skill in the art (Phosita). In my experience, Phosita in Germany is simply somewhat more clever than, let’s say, at the EPO. Just think about obviousness: Patents that survived EPO opposition proceedings are frequently invalidated in Germany, over the same prior art. I have been through that exercise myself, more than once. Fair enough, there is no right or wrong in this respect: Phosita is a legal fiction anyway. But whatever the level of skill is, it has to be consistently applied in all aspects of patent law — not only in the assessment of allowability of amendments, but also wrt novelty, obviousness and sufficiency of disclosure. A more liberal approach re allowability of amendments would imply a pretty clever Phosita, which in turn would place the hurdles higher with respect to non-obviousness.

A potentially never-ending story?

It has been clear since at least 4A_543/2017 (Fulvestrant) that a re-phrased patent claim presented only at the main hearing is a new fact (‘neuer Sachverhalt’) which was inadmissible under Art. 229 CPC; cf. ¶2.3.

The implications only slowly unfolded later. In 4A_583/2019BGE 146 III 416 (see this Blog here), the Supreme Court held that a partial waiver under Art. 24 PatA after closure of the file was fatal for the plaintiff: The re-phrased patent claim could not be introduced anymore into the proceedings, in view of Art. 229 CPC. And the initially granted patent was not in existence anymore; the partial waiver had ex-tunc effect. Thus, the complaint was dismissed as groundless. However, the Supreme Court also held that the patentee may file a new action based on the partially waived patent; ¶5.3.

This caused some confusion, in view of the earlier Supreme Court judgment 4P.91/1998. In a nutshell, this old judgment held that a patent proprietor can only assert claims against the same attacked embodiment in good faith in one single lawsuit. The apparent clash is nicely summarised in the FPC’s judgment O2018_004, ¶47.

The present judgment of the Supreme Court builds on the Fulvestrant judgment. BD had requested that proceedings at the FPC be stayed until EPO opposition proceedings are concluded. Otherwise, they would be precluded from again suing Ypsomed for infringment if the patent were maintained in limited / amended form. Not in the Supreme Court’s view:

However, this is not the case. The limitation of patent claims — whether verbally in the proceedings before the FPC or with erga omnes effect by the EPO or the IPI, respectively — leads, according to the case law of the Supreme Court, to a new (technical) basis for a claim.

Now, that’s straight to the point, isn’t it? A silent change of practice, in my perception. I would have wished for some mentioning of 4P.91/1998, for my peace of mind and to understand why. The impact of this decision may be huge. I would not be surprised to see practitioners adapt their litigation tactics accordingly:

    • Experiencing unexpected difficulties in establishing infringment by the attacked embodiment? Or did a procedural mishap occur? No worries. Just partially waive the patent (to an extent that is practically irrelevant for the case), bear the costs of the first case because it falls groundless, and then re-start the whole litigation again.
    • Assume the judge-rapporteur’s expert opinion makes clear that your chances of the case as you had put it in the first go are close to zero. However, it is also clear (now) how to fix it. Great! Just partially waive the patent, […].

Such scenarios don’t feel right to me; contrary to the gist of 4P.91/1998. I would very much like to be proven wrong, but it may well be that 4A_500/2021 has opened Pandora’s box.

The right to be heard is no end in itself

The judgment also mentions a minor skirmish between the President of the FPC and BD’s counsel at the main hearing in first instance proceedings. In an attempt to prevent pointless pleadings, the President had indicated at the main hearing that the request to stay the proceedings «will be dismissed», and that reasons will be given in the final decision. BD argued that this rendered the proceedings «unfair», and that the right to be heard was violated.

The Supreme Court did not buy into that. BD did not request recusal of the President, but rather only criticised the President’s conduct of the proceedings without a clear indication of the actual disadvantage that it suffered therefrom. The Supreme Court notes that the right to be heard is no end in itself (with reference to 4A_166/2021).

Expenses for patent attorney not refundable

Respondent tried to retrieve its expenses for the assistance of a patent attorney at the appeal stage. To no avail. The Supreme Court held that such expenses are included in the tariff, with reference to BGE 147 III 337, ¶8.

/MW

BIBLIOGRAPHY

Case No. 4A_500/2021 (Supreme Court) | Judgment of 31 January 2022 on appeal against O2020_001 (FPC) | Judgment of 9 June 2021

Becton, Dickinson and Company (Appellant / Plaintiff)
./.
Ypsomed AG (Respondent / Defendant)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Appellant / Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)

Representative(s) of Respondent / Defendant:

JUDGMENT OF THE SUPREME COURT
→ appeal against FPC decision dismissed
Case no.: 4A_500/2021
Judgment of: 31 January 2022

JUDGMENT OF THE FPC
→ complaint dismissed / patent invalid for added matter
Case no.: O2020_001
Judgment of: 9 June 2021

PATENT IN SUIT

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Liability for damages when goods are withheld at the customs

Reading time: 4 minutes

Case No. O2020_018 | Judgment of 4 January 2022 | ‘Customs assistance’

HEADNOTE

Art. 86k para. 2 PatA; Assistance provided by the customs administration, damages:

If no preliminary measures are ordered after goods have been withheld by customs, the applicant is liable for the damage caused by the withholding irrespective of whether the goods are patent-infringing.

We have reported about the main hearing in this matter on this Blog here. Now, the judgment is out. In a nutshell, plaintiff’s request for damages in the amount of about kCHF 38 was denied to about 95%; only CHF 1’800,– were awarded for legal assistance in the context of the seizure of a shipment at the customs. Interestingly, not even the costs for this item were awarded in full. First, the time spent (6 hours) was held to be excessive; only four hours were held reasonable:

Secondly, the hourly rate of CHF 550,– was reduced to CHF 450,–. Even though attorneys may well charge their clients more, the FPC holds that such costs cannot necessarily be imposed on a party liable for damages to full extent:

Requested items of the alleged damages that were not admitted are:

    • costs of refrigeration and deadfreight (for lack of substantiation; cf. ¶20);
    • costs for legal assistance relating to a test delivery (because that devlivery was not in the course of plaintiff’s normal business operations, i.e. voluntary; cf. ¶22 et seq.);
    • costs incurred for a protective letter (for lack of causation; cf. ¶24 et seq.);

The FPC also held that defendant’s course of action was apparently not vexatious; cf. ¶26 et seqq. and ¶33. Further, the FPC did not buy into the argument that customs assistance was not meant to be used for securing evidence of patent infringement, but rather (only) to stop piracy; cf. ¶28 et seqq.

All this appears pretty straight-forward to me. In my perception, the (really) interesting aspect of the decision is indeed the headnote. A Supreme Court judgment of more than twenty years ago (4C.164/2000, ¶3) in a trademark case might suggest that damages for withheld goods at the customs and when no PI has been granted can only be awarded when the preliminary question of infringement has been assessed. The FPC notes, however, that even though this might be a sensible approach in a trademark case, the same approach in patent matters would lead to a situation where the costs incurred for the assessment of (non)infringement would typically exceed the actual damages to be recovered, by far — contravening the gist of the framework defined by Art. 50 TRIPS.

Accordingly, the hn holds that liability for damages occasioned by withholding goods at the customs and when no PI is granted does not depend on whether or not the goods are actually infringing or not.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_018 | Judgment of 4 January 2022 | ‘Customs assistance’

Ypsomed AG
./.
Becton, Dickinson and Company

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Rudolf RENTSCH
    • Christoph MÜLLER

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch)
    • Maria ISKIC (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa Galbraith (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

JUDGMENT IN FULL

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Ypsomed and BD fighting over (abusive?) use of customs assistance

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Case No. O2020_018 | Hearing of 18 November 2021

BD logo

As indicated already in the public announcement of the hearing, defendant BD had requested assistance from the Swiss Federal Customs Administration, targeted against (a) certain product(s) of plaintiff Ypsomed. The customs administration subsequently indeed detained two shipments, i.e. one shipment of ‘SoloStar’ injection pens on July 30, 2020, and a shipment of components of ‘UnoPen‘ injection pens on August 5, 2020. Both shipments were released after a short period of time without the defendant filing a request for judicial seizure.

On a sidenote: It is not that BD did not do anything. BD had already lodged infringement proceedings against Ypsomed on 10 January 2020. The FPC has dismissed the complaint with decision of 9 June 2021; see this Blog here. An appeal is currently pending at the Supreme Court.

Ypsomed logo

Ypsomed now claims that the customs assistance measures were applied for improperly / abusive, and claims compensation for the damage it allegedly suffered as a result of the detention.

BD denies that the conditions for a claim for damages are met; moreover, Plaintiff has not been able to prove any financial damage in any event.

At the main hearing, Ypsomed painted a bigger picture and argued that customs assistance was not meant to be used for securing evidence of patent infringement, but rather (only) to stop piracy — which was not at stake here. Ypsomed was obviously fearing that its frequent exports of injector pens of various kind was in danger, at a larger scale. Further, Ypsomed complained that it had not been given sufficient access to the files of the proceedings at the customs. Only a redacted version of BD’s request was provided, but the actual request explicitly referred to features described in a fully redacted chapter. I understand that proceedings are co-pending before the Federal Administrative Court in this respect.

BD softpedalled the matter, essentially arguing that it simply used customs assistance, in full compliance with the law. As a matter of fact, customs assistance measures could be in place against anyone at any time, without knowledge thereof. That’s the whole point of the provision. BD argued that the present case actually shows that the system works smoothly. Both deliveries were released very quickly. The first one with ‘SoloStar’ injector pens could have been released even more quickly if Ypsomed’s counsel would only have provided a little more information over the phone when BD’s counsel asked for technical details of the retained ‘SoloStar’ pens.

Now, what’s the point of customs assistance when main proceedings are already pending and the allegedly infringing embodiment is available on the market, or plaintiff obviously has knowledge of the detailed mechanics of the allegedly infringing embodiment otherwise? At one point, Ypsomed referred to a correspondence between BD’s counsel and the customs administration, indicating that BD was seeking to clarify

[…] in which form or with which components Ypsomed exports the UnoPens from Switzerland.

Now, that makes sense! I understand that Ypsomed had argued in O2020_001 that BD’s patent required a cartridge with the medicament as part of the injector pen; see ¶ 27 of the FPC’s judgment in O2020_001. Accordingly, I assume that BD wanted to find out whether or not Ypsomed actually delivered ‘UnoPens’ with or without such cartridges. The timing fits well: The shipments were detained after Ypsomed’s answer and only after the instruction hearing, but (likely) before BD’s reply in O2020_001.

The parties did not enter into settlement discussions on the spot. The President indicated that a judgment (or an order on taking evidence) can only be expected in 2022, in view of the current workload.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_018 | Hearing of 18 November 2021

Ypsomed AG
./.
Becton, Dickinson and Company

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Rudolf RENTSCH

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)

ANNOUNCEMENT

SOME LIVE NOTES FROM THE HEARING

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Please welcome with me: The mind willing to understand, not desirous of misunderstanding

Reading time: 7 minutes

Case No. O2020_001 | Decision of 9 June 2021

BD logo

As mentioned earlier on this Blog here and here, Becton, Dickinson and Company had sued Ypsomed AG for infringement of EP 2 825 227 B1; see EPO Register and Swissreg for further bibliographic information.

The attacked embodiment is Ypsomed’s UnoPen™:

Ypsomed logo

The FPC’s judgment has meanwhile been published. Cutting a long story short: The FPC had to take a decision only on the unallowability of various amendments of EP 227, and dismissed BD’s complaint on this basis alone.

However, the most interesting aspect of the decision is claim construction. Accordingly, this is also mentioned in the FPC’s tweet:

Claim construction in good faith

With reference to an old Supreme Court decision, 107 II 366 (¶ 2), the jugdment holds that claims are to be construed in good faith; ¶ 24. This is what had been held in 107 II 366:

More recent judgments of the Supreme Court (in German language) did not explicitly refer to the good faith approch anymore, but rather only recited the sentence pertaining to the consequences of wrong, incomplete or contradictory definitions — which are to be borne by the patentee. However, this is apparently merely a shortened citation rather than a change of practice of the Supreme Court; a recent judgment in French language still refers to the good faith approach:

Now, what does ‘good faith’ mean when it comes to claim construction?

[drum roll]

You guessed it, didn’t you? Indeed, it’s the ‘mind willing to understand, not desirous of misunderstanding’ approach of T 190/99 to which the FPC now explicitly refers in ¶ 24 (fn 9):

T 190/99 is one of the most cited EPO decisions of all times. Sooner or later in any complex case at the EPO, the catchy headnote is cited by at least one party. Mostly, by the more desparate one.

The most interesting feature in terms of claim construction is feature 1.4.2:

According to the wording of the claim (emphasis added), the pen is configured such as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

The parties fundamentally disagreed how this is to be understood. The defendant held that the claim wording is clear by and in itself; no claim construction even needed. On the other hand, the plaintiff argued that this should be understood as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

in light of the specification — which is pretty much the opposite of the wording.

First, the judgment holds that feature 1.4.2 in isolation is indeed perfectly clear. However, the claim as a whole throws doubt on the linguistic interpretation of feature 1.4.2. In light of feature 1.4.3, this would mean that not only during an injection position, but also already during dose setting and dose correction a medicament would be ejected. This can’t be it; the claim as a whole would not amount to a credible technical teaching in such a reading.

Accordingly, in light of the specification, the skilled person would indeed understand feature 1.4.2 according to plaintiff’s interpretation, i.e. contrary to the mere linguistic interpretation.

Defendant further argued that one might well assume how a device with a literally interpreted feature 1.4.2 might work, e.g. with an additional (de)coupling arrangement. The FPC did not buy into that. In essence, this would mean to assume an additional feature to compensate for exactly the effect which is literally recited in the claim — which is counter-intuitive.

Finally, the judgment clarifies that this claim construction does not amount to a reduction of the scope of a claim to the disclosed embodiment(s). Rather, the claim as a whole does not provide a credible technical teaching (‘glaubhafte technische Lehre’) at all, and thus calls for proper construction in light of the specification. The proper construction of feature 1.4.2 is not narrower or broader than the literal interpretation; it is simply different.

Unallowable amendments

Allowability of amendments is always very case-specific and rarely of broader interest. This case is not an exception to the rule. However, I stumbled upon one of the various amendments that were held unallowable, i.e. the following feature (emphasis added; ¶ 49 et seq.):

[D]uring dose setting and dose correcting, stopping surfaces of said external teeth of said driver engage stopping surfaces of teeth of ratchet member to substantially prevent said driver from rotating with respect to said dose set knob.

The issue was whether there was disclosure in the application as filed for said engagement not only during dose setting, but also during dose correcting. Plaintiff argued that the feature would only mean, when properly construed in light of the specification, that during both dose setting and dose correcting the relative positions of the teeth of the driver and the teeth of the ratchet member are maintained.

The judgment holds that this is not the right approach: Allowability of amendments is all about clear and unambiguous disclosure in the application as filed, not about whether the skilled person could correctly construe or understand the feature.

On a quick read, this might be confusing. Claim construction surely matters; it has to go hand in hand with the check for proper disclosure in the application as filed; cf. e.g. Case Law of the Boards of Appeal, II.E.1.3.9. Else, the test for allowability of amendments would effectively only amount to a check for verbatim disclosure in the application as filed.

With respect to the specific feature recited above, the judgment holds that engagement of the stopping surfaces (if that may occur at all) in the correcting direction just cannot be such ‘as to substantially prevent said driver from rotating with respect to said dose set knob’:

Dies können die Stoppflächen bei einer Drehung in der entgegengesetzten Richtung als der bei der Dosiseinstellung auf keinen Fall; […]

The issue here was actually a classic non-disclosed feature: the engagement of the stopping surfaces as disclosed could not have the claimed effect; other configurations (which were not disclosed) could well have that effect, e.g. with rectangular teeth. Unlike the claim construction issue above where the claim as a whole did not make technically sense when taken literally. Accordingly, the amendment was unallowable. And, with a mind willing to understand, the judgment does not deny that claim construction matters when checking for allowability of amendments.

Expenses

The judgment is a good reminder that expenses for assisting patent attorneys have to be substantiated. Expenses of more than kEUR 30 for involvement of a patent attorney on two days is not credible from the outset.

BD’s appeal has been dismissed by the Supreme Court with decision 4A_500/2021 of 31 January 2022 (published 9 March 2022).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_001 | Decision of 9 June 2021

Becton, Dickinson and Company
./.
Ypsomed AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Lorenzo PARRINI

Judge-rapporteur:

    • Christoph MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
    • Dr. Axel REMDE (Rentsch), assisting in patent matters
    • Markus FRANTZ (SSM), assisting in patent matters

FPC DECISION

PATENT IN SUIT

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Deriving meaning from a claim: Narrower, broader … or contrary to the wording?

Reading time: 6 minutes

Case No. O2020_001 | Hearing of 4 June 2021

BD logo

As mentioned earlier on this Blog here, Becton, Dickinson and Company has sued Ypsomed AG for infringement of EP 2 825 227 B1; see EPO Register and Swissreg for further bibliographic information.

The attacked embodiment is Ypsomed’s UnoPen™:

Ypsomed logo

It appears that BD is envoking EP 227 not as granted, but only to limited extent inter partes — presumably in accordance with the main request currently on file at the EPO in opposition proceedings. The parties used a feature analysis in accordance with the numbering in the first column of the following table (taken from the preliminary opinion of the OD):

I understand that the patentee’s amendments are addressing allegedly unallowable amendements / generalisations during prosecution. In my understanding of what has been pleaded, the juge-rapporteur had spotted multiple unallowable amendments; see also the preliminary opinion (p. 4-9) of the OD in EPO opposition proceedings in this respect.

Metes and bounds of claim construction

This is where it gets really interesting. According to the wording of the claim (emphasis added), the pen is configured such as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

The parties fundamentally disagree how this is to be understood. The defendant holds that the claim wording is clear by and in itself; no claim construction even needed. On the other hand, the plaintiff argues that this should be understood as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

Plaintiff submitted that in light of the claim as a whole and the embodiments outlined in detail in the specification, the skilled person would readily understand that nothing else could be meant. But isn’t that quite the contrary of what the mere wording of the feature might suggest, at least at the face of it?

There are pros and cons for both positions. The preliminary opinion (p. 10/11) of the OD in EPO opposition proceedings is in line with plaintiff’s position:

Anything else would not make sense for the man skilled in the art and would be therefore disregarded.

On the other hand, the most recent decisions of the Swiss Federal Supreme Court, i.e. 4A_581/2020 and 4A_317/2020, might arguably be more in line with defendant’s position:

convince me!

It will be interesting to see how the FPC finally decides on this issue. The judge-rapporteur apparently followed defendant’s position in his expert opinion. But the President made very clear in his opening remarks that the judges have no uniform opinion on the issue yet, and mentioned to the attorneys before the pleadings:

Bitte fühlen Sie sich dadurch nicht unter Druck gesetzt.

Even at the end of the hearing, the President said that he changed his mind at least twice during the day. This highly interesting aspect of claim construction really appears to be a close call.

Patentability

Novelty has apparently been acknowledged in the judge-rapporteur’s expert-opinion. The discussion at the hearing focused only on three documents, i.e. WO 2006/084876 A1, WO 2010/072427 A1 and WO 2021/125876 A1.

However, I understood from the pleadings that the expert-opinion had held that the claimed subject-matter was obvious in view of the prior art.

Livestream
live stream

On request of the plaintiff, a live stream of the hearing had been made available to allow foreign counsel to attend the hearing, i.e. Freshfields attorneys who are handling corresponding litigation in Munich / Germany for the plaintiff, as well as some BD personnel.

It was the very first time that the FPC provided this service; much appreciated! Even though it did not work out without hiccup (room change on the spot; no video signal anyway; sensitivity of microphones; …). Still, I hope this service is here to stay. Maybe, even for the public to attend remotely … ?

(No) Stay of proceedings / TIMING

Plaintiff had apparently requested that proceedings be stayed pending the decision in opposition proceedings at the EPO. In view of the time constraints at the hearing, defendant’s counsel enquired whether pleadings on this issue were necessary (which would have taken him about 30 min more), or whether the court was inclined to deny the request anyway. The President informed the parties after a break that the request will be denied, and defendant’s counsel omitted that part of his pleadings accordingly.

The President signaled that one might reasonably expect a decision only after judicial vacation, i.e. after 15 August 2021.

Finally, defendant’s counsel encouraged the court to consider issuing the operative part of the judgment as soon as it is available, to remove the legal uncertainty as soon as possible. The President explained that this is not possible (likely in view of the reference in Art.  239(3) CPC to the Supreme Court Act; Art. 112(1) SCC appears to rule this out).

Reported by Martin WILMING

Oh, on the funny side: When the end of the hearing was approaching and someone formally requested a restroom break, laughter broke out at the other end of the court room after a short delay. Perhaps someone imagined what would happen if this request was not granted(?).

BIBLIOGRAPHY

Case No. O2020_001 | Hearing of 4 June 2021

Becton, Dickinson and Company
./.
Ypsomed AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Lorenzo PARRINI

Judge-rapporteur:

    • Christoph MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
    • Markus FRANTZ (SSM), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

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Ypsomed sued twice(!) for patent infringement by its UnoPen™

Reading time: 4 minutes

As noted earlier on this Blog here, we knew that a medical device company has been sued by two competitors for infringement of their respective patent(s) by one and the same injector pen.

Now we know that it’s Ypsomed’s UnoPen™ that is being haunted after:

With some further digging in the EPO dockets, I have now all the pieces together to summarize the essentials of the two cases that are pending at the FPC, as follows:

O2020_001

Becton, Dickinson and Company
./.
Ypsomed AG

Patent in suit: EP 2 825 227 B1 (limited, inter partes);
see EPO Register and Swissreg for further bibliographic information.
Main hearing: 4 June 2021, 10:00 hrs
BD logo

From Ypsomed’s acceleration request in EPO opposition proceedings, it is evident that corresponding infringement proceedings are pending before the Landgericht München I, case no. 21 O 367/20.

Oral proceedings in opposition at the EPO are scheduled for 18 October 2021. The summons came along with a preliminary opinion of the OD (cf. p. 2 et seqq.). By way of its main request, BD currently defends the patent in limited form only. However, it is currently unclear whether this wording corresponds to the limitation that has been made inter partes in the Swiss proceedings. The OD’s preliminary opinion holds that the main request is unclear and comprises unallowable amendments. Novelty / obviousness is not dealt with in-depth, for the time being.

In view of the branding on this exhibit, I feel confident enough to say that BD is represented by MLL in the Swiss proceedings.

O2017_022

Sanofi Aventis Deutschland GmbH
./.
Ypsomed AG

Patent in suit: EP 2 437 830 B2;
see EPO Register and Swissreg for further bibliographic information.
Sanofi logo

While opposition / appeal proceedings were pending at the EPO, Ypsomed interevened as an assumed infringer. From the redacted complaint it is clear that Sanofi has invoked yet two further European patents; see N 5.

Sanofi is represented by Homburger‘s Andri HESS and Roman BÄCHLER.

These proceedings have been derailed well after the expert opinion of judge-rapporteur Bremi had been established and most likely only shortly before the main hearing; see this Blog here. From the Supreme Court judgment 4A_243/2020, it is evident that Ypsomed is represented by Rentsch Partner.

A little bit of background

Ypsomed logo

It is not the first time that Ypsomed and Sanofi have locked jaws in patent infringement proceedings. They settled «all currently pending patent disputes and other litigations» in April 2008. At that time, Ypsomed had attacked Sanofi’s SoloStar®. The tables have turned now when Sanofi is seeking injunctive relief.

Noteworthy, Ypsomed’s growth in the pen business is, to large extent, attributable to the UnoPen™:

What is more, Ypsomed is being sued by a (very) good customer:

It will be interesting to see how all this finally unfolds. Stay tuned.

Reported by Martin WILMING

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