‘Oh, just one more thing’

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Case No. 4A_562/2021 (Supreme Court) | Judgment of 1 December 2021 on appeal against O2020_014 | Procedural decision of 22 October 2021

This judgment of the Supreme Court refers to an unpublished procedural decision of the FPC of 22 October 2021 in case no. O2020_014. Nothing has surfaced about this case so far, except for this judgment.

The case started as a ‘normal’ patent infringement case at the FPC, with one patent in suit and six requests. Only after the instruction hearing and with plaintiff’s reply in the second round of briefs, a second patent was invoked. And the number of requests increased to 54. Two of these requests (50 and 51) seek a declaration of infringement of the newly invoked patent, subsidiarily to the requests relating to the first patent.

The FPC had held in a procedural decision that this amounts to an amendment to the statement of claim according to Art. 227 CPC, and that this amendment is admissible in view of the factual connection between the initial and the amended claim; Art. 227(1) lit. a. Accordingly, the defendants were ordered to provide the rejoinder also with respect to the requests 50 and 51.

The late assertion of the second patent has various implications. First, defendants do not have the possibility to lodge a formal counter-claim for invalidity; this is only possible with the statement of defense (Art. 224 CPC) — which had already been provided.

Secondly, defendants are deprived of an instruction hearing with respect to the second patent, and they do not have the chance to argue twice in writing, without limitations, on the second patent: After the rejoinder, there is only an unconditional right to reply to new assertions.

The presiding judge did not buy into that. In particular the second line of arguments could well be dealt with in an appeal against the final decision, if defendants would not prevail on the merits before the FPC.

Accordingly, the judgment holds that the appeal was obviously inadmissible (‘offensichtlich unzulässig’), and the appeal was thus not even considered.

Boom. That’s a harsh decision, in my perception. I sincerely hope that this example does not set a precedent for tactical gamesmanship in proceedings before the FPC, in the sense that yet further patent(s) are only invoked with the reply, after the instruction hearing and when the waters have been tested with a first patent.

Oh, just one more thing … here’s yet another patent that’s infringed!

It will be interesting to see how the case finally unfolds. I have a vague feeling that it might be about … 😉

Reported by Martin WILMING

Header image: Courtesy of Wikimedia Commons / CC BY-SA 3.0

BIBLIOGRAPHY

Case No. 4A_562/2021 (Supreme Court) | Judgment of 1 December 2021 on appeal against O2020_014 | Procedural decision of 22 October 2021

Aa___ Inc.
Ab___ Ltd.
Ac___ GmbH
(Defendants / Appellants)
./.
B___ AG (Plaintiff / Respondent)

Single Judge:

    • Dr. Christina KISS

Court Clerk:

    • Dr. Thomas WIDMER

Representative(s) of Appellants / Defendants:

Representative(s) of Plaintiff / Respondent:

    • Adriel CARO (Caro)

JUDGMENT OF THE SUPREME COURT
→ Appeal against procedural decision of the FPC of 22 October 2021 not considered
Case no.: 4A_562/2021
Judgment of: 1 December 2021

PROCEDURAL DECISION OF THE FPC
→ Change of the complaint admitted, incl. requests for injunctive relief based on second patent only asserted with plaintiff’s reply
Case no.: O2020_014
Procedural decision of: 22 October 2021

[unpublished]

PATENTS IN SUIT

n/a

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