Enforcement of an injunction: The risk of hyperlinks

Reading time: 6 minutes

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

C&E Fein and Bosch have been litigating with Coram for quite a while, first in summary proceedings (no PI was imposed on Coram; see this Blog here) and subsequently in main proceedings (see this Blog here). The judgment in main proceedings held that EP 362 (see the EPO Register and Swissreg for further information; verbally substantially limited inter partes) was valid and infringed by Coram’s tools with connectors referred to as ‘Quick-Fit’ or ‘Q-Fit’.

Coram appealed, but the Supreme Court dismissed the appeal with judgment of 11 February 2022 (published only yesterday, 6 April 2022). Note that the appeal had no suspensive effect.

While the appeal was still pending, the parties locked jaws again. C&E and Bosch asserted that Coram did not comply with the court order.

Here is what happened:

The FPC handed down its judgment in main proceedings on 1 September 2021. The operative part of the judgment inter alia prohibits Coram to contribute to the offering of the saw blades with infringing ‘Quick-Fit’ connectors:

I take from the judgment that Coram immediately complied with the operative part of the judgment in most parts. Coram does not sell directly to end users, but only to a single distributor, Revotool. Coram immediately stopped its sales to Revotool, recalled infringing items from Revotool and urged Revotool to recall items from downstream distributors.

However, Coram’s website apparently remained unchanged until about 19 October 2022; the landing page still showcased tools with Q-Fit connectors e.g. on 16 September 2021. The tricky thing is that there is a hyperlink («Wo kaufen? […] Händlernetzwerk») at the bottom of the page, that provides a list of all points of sales in Switzerland where Coram products (not all of which are covered by the judgment) can be purchased by end users. The judgment holds that this is covered by the prohibition of contributing to offers. The legal term «Mitwirken» is broad, but clear:

Even though no actual sale of infringing goods has occured, the judgment holds that Coram had an increased duty of care in view of the judgment, and that a hyperlink to webpages where infringing goods are still offered (even though they have apparently not been sold anymore via these webpages!) is not excusable under the circumstances.

After a warning letter, Coram put a disclaimer on its website on or after 19 October 2021 (see e.g. here, 30 November 2021):

Das Angebot der Quick-Blätter gilt nicht für die Schweiz. Es werden keine Sägeblätter mit der Quickaufnahme in die Schweiz verkauft.

The judgment holds that this did not resolve the issue, but rather amounts to a somewhat contradictory behavior. The disclaimer indicated non-availability in Switzerland, but some points of sale that were hyperlinked by Coram still offered infringing tools.

Calculation of the administrative fine
you’ve been bad!

The initial threat was an administrative fine of CHF 1’000,– per day. The judgment acknowledges that Coram did not entirely ignore the operative part of the judgment and holds that the violation was only minor («minderschwer»). Further, Coram did not act wilfully, but only negligently. With the disclaimer in place after 19 October 2021, the violation is held to be even less severe. Accordingly, the daily fine was set to CHF 300,– for each day of violation until 19 October 2021, and CHF 100,– for each day thereafter.

Even though the max. fine was reduced by 70% and 90%, respectively, the overall fine still amounts to CHF 16’800,–. The overall bill for Coram is CHF 25’800,–, including a court fee of CHF 4’000,– and a partial refund of plaintiffs’ expenses for legal representation of CHF 5’000,–. That’s quite some money for a negligent hyperlink to some point of sales websites that still showed infringing offers which did not result in a single sale.

Coram’s second generation ‘Quick-Fit’

Here is an example of Coram’s tools with the first generation ‘Quick-Fit’ or ‘Q-Fit’ connectors :

You will readily appreciate the hexagon shape of the connector. Accordingly, there are six driving area regions in the first generation ‘Q-Fit’ connectors — an even number between 4 and 32 in accordance with the verbally limited claim.

Apparently, this fits well into the dodecagon shape of Starlock® fittings of Bosch and C&E Fein:

Starlock® fitting and tool  with dodecagon shape
‘Q-Fit’ (gen. 2)

Interestingly, a heptagon shape apparently is also compatible with the Starlock fitting. Coram’s second generation ‘Q-Fit’ (see e.g. the header image) that has been introduced into the market apparently in due consideration of the injunction has no even number of driving area regions anymore.

A smart move, this quick fix second gen “Q-Fit”, isn’t it?

/MW

BIBLIOGRAPHY

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Daniel M. ALDER
    • Dr. Markus A. MÜLLER

Judge-rapporteur:

    • Dr. Daniel M. ALDER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUMMARY JUDGMENT / ENFORCEMENT

JUDGMENT ON THE MERITS

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The expert opinion of the judge-rapporteur is not the end of the line

Reading time: 8 minutes

Case No. S2018_007 | Decision of 2 May 2019

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

We had reported about the main hearing in this matter on this Blog here.

The patent in suit

Bosch’s logo

The invention is about a tool which is intended to be used with a machine tool, in particular a hand guided machine tool. The machine tool has a rotational drive, e.g. an oscillating drive.

In simple terms, it’s all about a somewhat special attachment device that transfers a torque from the driving device to the machine tool. It’s a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools

Bosch has the same attachment system in place in the Professional Multitool series:

Bosch’s GOP 12 V-28 Professional Multitool

Plaintiffs referred to it as ‘Gugelhupf’ or ‘Napfkuchen’. The claim language is a bit more complicated and less culinary, though.


Claim 1 of EP'362

1.1 A tool device (1, 1b) which is suitable for use with a machine tool (22), and in particular suitable for use with a hand guided machine tool, which has a driving device moving around a driving axis, and in particular oscillating around the driving axis,
1.2 and which has an attachment device (12) by means of which it can be fastened to a machine tool (22) in such a manner that the driving axis and a tool axis of rotation (5) are substantially coincident,
1.3 wherein, for receiving a driving force, the attachment device (12) comprises at least two driving area regions (2, 2a, 2b) each having a plurality of surface points (3) and which are spaced from this tool axis of rotation (5),
1.4 characterized in that tangent planes (4) at these surface points (3) are inclined relative to an axial plane (7), which includes the tool axis of rotation (5),
1.5 wherein the tangent planes (4) are inclined relative to a radial plane (6), which extends perpendicular to the tool axis of rotation (5),
1.6 wherein the attachment device (12) comprises a side wall,
1.7 wherein the side wall extends spaced radially from the tool axis of rotation (5),
1.8 wherein the side wall extends between a first, upper boundary plane (8a) and a second, lower boundary plane (8b), and
1.9 wherein the side wall comprises the driving area regions (2, 2a, 2b),
1.10 wherein a substantially hollow conical section is formed in the region of the attachment device by means of the side wall, which section has a cross section with a variable spacing of the side wall to the tool axis of rotation in a plane orthogonal to the tool axis of rotation.


The alleged infringement

Coram’s logo

The plaintiffs asserted that EP’362 (more precisely, the independent claim 1 and dependent claims 2-9, 11, 13 and 14) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’, and requested interim injunctive relief.

And indeed, the attachment device of Coram’s saw blades appears somewhat ‘gugelhupfig’:

But infringement was not the major issue here. Apparently, it had not even been explicitly disputed.

The bone of contention was the validity of EP’362.

The expert opinion was not yet it

What …?!

It was clear from the pleadings at the main hearing that the judge-rapporteur’s expert opinion had held that EP’362 was valid.

Some still say that the expert-opinion of the judge-rapporteur is effectively the end of the line. And, indeed, the handwriting on the wall bodes poorly when the judge-rapporteur does not follow your arguments. But there are exceptions to the rule, and the present case apparently is a prime example.

Novelty / claim construction

The decision holds that EP’362 is invalid.

Even though novelty over DE 2 120 669 has been acknowledged (because the ‘Gugelhupf’ structure in Fig. 5 of DE'669 is not the attachment device of the tool towards the driving means, but rather only an inner part of the tool itself) , the decision holds that claim 1 is not novel over EP 0 596 831 A1:

Fig. 2 of EP’831 (annotations by the FPC to show the sidewalls, i.e. the cone-shaped surfaces 8c and 8d). Note that the figure is erroneously referred to as Fig. 4 in the decision.

The critical issue here was claim construction. The decision again expands on a key aspect of claim construction, as follows (r. 14):

Claims are to be construed functionally, i.e. a feature is to be construed in such a way that it can fulfil the intended purpose. The claim should be read in such a way that the embodiments disclosed in the patent are literally covered; on the other hand, the wording of the claim should not be restricted to the embodiments if it covers further embodiments. When case-law refers to ‘broadest interpretation’ of claim features, the feature must still be capable of fulfilling its purpose in the context of the invention. This means that the claim must not be interpreted under its wording, but also not in such a way that embodiments are covered which do not achieve the inventive effect.

It is the second time that this paragraph is verbatim included in a decision in a short time; r. 14 of the present decision corresponds literally to r. 25 of O2016_009 (see this Blog here). For the time being, it is pretty clear what to expect at the FPC when it comes to claim construction.

By the way, you would not notice from the decision itself that the expert opinion of the judge-rapporteur has been reversed. It is just noted that the judge-rapporteur had provided his opinion on 25 March 2019, but the decision is silent about its content. Some earlier decision of the FPC gave at least some indication in this respect (e.g. O2015_011, r. 4: “On the question of validity [the judge-rapporteur] gave his expert opinion. The panel agrees with this opinion, with certain additions, as will be explained below. ), but the more recent decisions don’t give this insight anymore. What a bummer.

With the independent claim 1 being held likely invalid, the whole patent was held to be likely invalid. Thus, the request for interim injunctive relief was dismissed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2018_007 | Decision of 2 May 2019

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Markus A. MÜLLER
  • Dr. Stefan KOHLER

Judge-rapporteur:

  • Dr. Markus A. MÜLLER

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters

FULL TEXT DECISION 
Case no.: S2018_007
Decision of: 2 May 2019
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Anything but a quick fix: Coram beavering away at knocking out a patent

Reading time: 7 minutes

Case No. S2018_007 | Hearing of 15 April 2019

C&E Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information. The invention is about a tool which is intended to be used with a machine tool, in particular a hand guided machine tool. The machine tool has a rotational drive, e.g. an oscillating drive. Examples include a drill, a grinding disc, a cutting disc or a circular saw. If you are interested in such detailed information, you will easily get the gist of the invention from e.g. Fig. 11 of EP’362 (see header picture) when reading the main claim of the patent.


Claim 1 of EP'362

A tool device (1, 1b) which is suitable for use with a machine tool (22), and in particular suitable for use with a hand guided machine tool, which has a driving device moving around a driving axis, and in particular oscillating around the driving axis,

and which has an attachment device (12) by means of which it can be fastened to a machine tool (22) in such a manner that the driving axis and a tool axis of rotation (5) are substantially coincident,

wherein, for receiving a driving force, the attachment device (12) comprises at least two driving area regions (2, 2a, 2b) each having a plurality of surface points (3) and which are spaced from this tool axis of rotation (5),

characterized in that tangent planes (4) at these surface points (3) are inclined relative to an axial plane (7), which includes the tool axis of rotation (5),

wherein the tangent planes (4) are inclined relative to a radial plane (6), which extends perpendicular to the tool axis of rotation (5),

wherein the attachment device (12) comprises a side wall,

wherein the side wall extends spaced radially from the tool axis of rotation (5),

wherein the side wall extends between a first, upper boundary plane (8a) and a second, lower boundary plane (8b), and

wherein the side wall comprises the driving area regions (2, 2a, 2b),

wherein a substantially hollow conical section is formed in the region of the attachment device by means of the side wall, which section has a cross section with a variable spacing of the side wall to the tool axis of rotation in a plane orthogonal to the tool axis of rotation.



The invention aims at providing a tool device in such a manner that the torque which is effectuated by the driving device of the machine is reliably transferred to the tool device. This is achieved by an attachment device (12) which comprises side walls that comprise driving area regions (2). Those driving areas (2) are spaced apart from the tool axis and inclined with respect to the axial plane. It is the function of the driving areas to receive a driving force.

Bosch’s logo

The plaintiffs asserted that EP’362 is infringed by defendant’s saw blades ‘B-Cut’ with ‘Quick Fixture’, and requested interim injunctive relief. Indeed, at least at first sight there are quite some similarities between Coram’s saw blades with ‘Quick Fixture’ (header image, right hand side) and the figures of the allegedly infringed patent (header image, left hand side). But the question of whether or not the allegedly infringing devices actually read on the claim was not an issue in the hearing. Likewise, it was only a sideshow in the hearing whether the matter was urgent, and whether the alleged violation threatened to cause not easily reparable harm to the plaintiffs (Art. 261(1) lit. b CPC).

An allegedly infringing saw blade with ‘Quick Fixture’
Coram’s logo

However, the defendant argued for nullity as a plea in defense, i.e. asserted a lack of novelty over EP 0 596 831 A1 and DE 2 120 669. The defendant construed EP’362 broadly and, thus, found the claimed subject-matter more readily anticipated in the prior art than the plaintiffs — and apparently also more readily than the judge-rapporteur. Specifically, the defendant argued that a ‘side-wall’ not necessarily implies a 3D-structure but is anticipated already by a 2D-surface (as disclosed in Fig. 4 of EP'831). With regard to DE'669, the defendant argued that a feature having a certain function (‘driving area […] for receiving a driving force’) is anticipated by a feature which might not exclusively have that function but nevertheless supports it (‘carrier with an projecting attachment’ as shown in Figs. 5 and 6 of DE'669).

In order to support views on correct claims construction from a Swiss perspective, O2013_008 (‘Sprühpistole’) was cited repeatedly by the parties. Unless the case was settled by agreement after the public part of the hearing, we might gain more insight on this issue soon.

The defendant further argued that the request for interim injunctive relief was overly broad and covered embodiments of the prior art.

Both representatives requested reimbursement of the necessary expenses for the assisting patent attorney in the same amount as are costs for legal representation according to the tariff (~kCHF 25 each).

On the procedural side, it was good to see that the projector / screen infrastructure was used again by at least one party and the court (connection of Windows® devices apparently is unproblematic). Further 8562532553 who call , plaintiffs’ counsel inquired whether the court wishes to be provided with pleading notes or not (see this Blog here for my very personal view, and the results of a little survey). Obviously, some judges appreciate written pleading notes; and some judges don’t. From a personal note of the president, however, it could be inferred that he liked pleadings in free speech. So, now we know!

Reported by Jolanda MINDER and Martin WILMING

BIBLIOGRAPHY

Case No. S2018_007 | Hearing of 15 April 2019

C&E Fein GmbH
Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Markus MÜLLER-KÄGI
  • Dr. Stefan KOHLER

Judge-rapporteur:

  • Dr. Markus MÜLLER-KÄGI

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

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