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.

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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When the EPO’s BoA decision is not persuasive authority

Reading time: 6 minutes

Case No. O2019_005 | Decision of 3 May 2021 | ‘Schnittschutzstreifen’

As reported earlier on this Blog here and here, Sanipat GmbH and Hafner AG have been litigating over certain sealing strips for e.g. shower trays, i.e. Hafner’s ISO-SET®.

In brief, Sanipat had initially asserted EP 2 405 067 B1 and CH 703 691 (see the complaint below), but EP 067 had been revoked by a Board of Appeal of the EPO while proceedings at the FPC were pending; see T 0717/20 – 3.2.03 below. However, CH 691 was still in the game.

No infringement

The operative part of the judgment is not a complete surprise anymore after the pleadings and the taking of evidence at the main hearing: Sanipat’s complaint has been dismissed for lack of infringement. The key issue was whether or not ISO-SET® comprises a cut protection strip (‘Schnittschutz-Streifen’). The cutting experiments had established that ISO-SET® could well be cut with relative ease with a knife. Even though the polyamid / aramid backing of ISO-SET® provides for some reinforcement at the ‘right’ place, this effect was not pronounced enough to convice the court: The backing could still be cut through with a cutter knife operated at a pressing force of only 4-8 Newton. Accordingly, this backing could not fulfill the function it should have according to the patent, in the court’s view.

Now, what is the backing good for, then — if not for cut protection?

The judgment holds that this is indeed a tricky question. However, Hafner only claims in its commercial documents that this aramid backing is meant to keep the sealing tight even when the silicone joint is replaced. It is not specifically claimed that the backing is meant to prevent cuts. A pretty thin line of distinction.

The Board of Appeal decision is not «persuasive authority»

The claim at stake inter alia requires an adhesion surface (‘Klebefläche’). Now, does that feature imply that the surface is equipped with an adhesive? Or does that feature read on any surface onto which an adhesive can be applied?

handicraft paper

The judgment holds that the latter understanding might well be applicable in a different context, e.g. in case of a handicraft paper. However, in case of an adhesive tape, the skilled person would not refer to the non-sticky side as an ‘adhesion surface’. Very illustrative, isn’t it?

Still, a Board of Appeal decided differently in T 717/20 — and revoked the corresponding European patent based on that different claim construction:

The FPC took note of that decision, but was not convinced of its reasoning. Even though Board of Appeal decisions are persuasive authority in some cases, this is not necessarily the case. In the specific claim construction issue at stake, the judgment holds that T 717/20 was not persuasive (i.e. no authority).

Novelty and non-obviousness

The decision holds that CH 691 C1 (after the second partial waiver) is novel over Wetzel 2010, Wetzel 2006, EP 2 071 091 A2, DE 299 08 603 U1 and JPH 09 125 560.

To avoid confusion: Note that the publications of the partial waiver of 2016 and 2019 both have the same Inid code (11), i.e. CH 703 691 C1. This is wrong. The second partial waiver should have been published as C3, actually.

Defendant’s obviousness attacks were based on various alternative pieces of ‘closest’ prior art, i.e. DE 10 2007 043 593 A1, EP 1 038 485 A2, DE 10 2007 010 997 A1, EP 1 891 877 A2, Wetzel 2010 and Wetzel 2006. None of these attacks was successful. I do not believe that the detailed discussion of (non-)obviousness is of broader interest — with two exceptions:

First, the judgment refers to the secondary indicator of a (long-felt) need in support of a finding of non-obviousness, similar to the EPO Guidelines, G VII 10.3. Interestingly, a time of (only) four years is held to be indicative of a (long-felt) need.

Secondly, the FPC defined the objective technical problem more ambitious than the Board of Appeal. Since it had not been pleaded that a certain effect would not occur over the whole scope claimed, the judgment holds that it is to be accepted that the effect (which is a matter of fact) actually occurs.

Claim construction, revisited

Claim construction is one of my favourites, and it is always highly interesting to see how courts deal with it. The most general remarks on claim construction in ¶ 27 (first paragraph) of the judgment refer to O2019_003, ¶ 22 — reciting exactly the same wording (emphasis added):

If the patent specification does not define a term differently, the usual understanding in the relevant technical field is to be assumed.

However, when this concept is being applied to a specific term used in the claim, i.e. adhesive surface (‘Klebefläche’) in ¶ 29 on the very next page, a somewhat different standard is apparently applied:

The usual understanding in the relevant technical field must be taken as a basis, and then it must be examined whether the patent uses the term differently.

Even though the fn again refers to O2019_003 (r. 22), this is not exactly what had been held in that decision: A patent may well use a term differently than usual in the relevant technical field, without actually defining it differently.

So, is it sufficient to just use a term unconventionally in the specification for it to be construed in deviation from the usual understanding? And, if so, which kind of use does it need? Maybe, we will catch a further glimpse on that issue from a judgment in case O2020_001 soon.

No appeal has been filed; the decision is final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005 | Decision of 3 May 2021

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Alfred KÖPF

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Dr. Bruno MEYER (PRINS), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Michael RITSCHER (MLL)
    • Michelle AMMANN (MLL)
    • Silvan LATSCHA (LS Partner), assisting in patent matters

DECISION IN FULL

COMPLAINT AS FILED

T 717/20 (EPO)

EP 2 405 067 B1

CH 703 691

Partial waiver of 2019:

Partial waiver of 2016:

Initially granted:

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Essentials of claim construction

Reading time: 7 minutes

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

DISCLOSURE NOTICE

Hepp Wenger Ryffel is involved in this matter on behalf of Alcon.

Hoya logo

HOYA had lodged nullity proceedings against Alcon re EP/CH 2 002 803 B1; see the European Register and Swissreg for further bibliographic information. Don’t be misled by the reference to EP 2 002 801 at various occasions in the decision (including the operative provisions); that’s a typo.

Alcon logo

The invention of EP 803 relates to intraocular lenses (IOLs), more particularly to cartridges used to inject IOLs into an eye. This is reflected in claim 1 of EP 803 as granted, broken down into distinct features, as follows:

Claim 1 of EP 803

1.1 An intraocular lens injector cartridge (10), comprising:
1.2 a body (12) having an internal lumen (15);
1.3 a tubular nozzle (14) having an outer wall (36) and an opening (18),
1.3.1 the nozzle projecting distally from the body,
1.3.2 the opening being fluidly connected to the internal lumen of the body;
1.3.3 and wherein
a) the nozzle opening is defined by an extended canopy (20, 20’, 20″)
b) projecting distally from a plane of the opening (18, 18’, 18″)
c) at least partially encircling the opening;
1.4 at least one peripheral protrusion (22) extending laterally from the outer wall of the nozzle proximally from the opening;
1.4.1 the at least one peripheral protrusion (22) is spaced proximally from the plane of the opening so as to provide an insertion depth limitation and prevent full insertion of the cartridge tip, in use.

added subject-matter?

The decision holds that the combination of features 1.3.3 b), 1.4.1 and 1.3.3 c) is based on two different embodiments, and that feature 1.4.1 itself is based on an intermediate generalization; the decision further holds that this also applies to the auxiliary requests (¶ 39).

These issues of (non-)complicance with the requirements of Art. 123(2) EPC are very case-specific, and I do not believe they are of broader interest beyond the case at hand. An appeal is currently pending at the Supreme Court.

But there are quite some other aspects in the decision that I find interesting.

comments on the expert opinion

The parties had been given the chance to the comment on the judge-rapporteur’s expert opinion in writing, within a time limit fixed by the court. But what if a party does not comment in writing: Is that party prevented from pleading at the main hearing on that issue? The decision holds that this is not the case. However, the decision also holds that it contravenes the equality or arms not to submit a position in writing within the time limit set by the court, but to argue extensively on the expert opinion at the main hearing.

Even though it had no consequences in this case, it appears that unconditional withholding of comments on the expert opinion is a risky thing to do.

The skilled person

There is an interesting remark in the decision about how the knowledge and expertise of the skilled person is to be determined. The decision holds that the relevant technical field of the invention is to be determined in first place, and, as a second step, the specific competencies of the skilled person in that technical field are to be determined.

That’s pretty straight-forward, isn’t it? The decision refers to S2017_001 (¶ 4.4) in this respect. In that case, it had been held that the definition and knowledge of a skilled person that had been proposed by the parties appeared to be correct in view of the technical problem defined in the patent itself.

But what if a party argues for obviousness starting from a ‘closest’ prior art document that is not in the same technical field, and/or the objetive technical problem is not anymore the one that is stated in the patent? Let’s take a washing machine as an example. The invention is all about a very energy-efficient motor — in a washing machine.

No washing machine on board, I guess.

Let’s further assume that such a very energy-efficient motor had been described in the prior art, but only in a publication relating to the space station ISS. Such a document cannot be ignored as a potentially promising springboard; see e.g. S2017_001, ¶ 4.6. Now, starting from that publication, the skilled person being an engineer of washing machines would immediately recognize what a perfect fit this motor is for his daily business, i.e. washing machines. The invention is just plainly obvious(?). But that can’t be it, right? Starting from a technologically pretty unrelated ‘closest’ prior art document, the skilled person cannot rightly be considered to be skilled in the field where the solution or the invention lies. Rather, I feel the skilled person should then be from the field where this ‘closest’ prior art stems from (i.e., in my example above, an aerospace engineer). And when you ask an aerospace engineer for alternative uses of the motor, he quite likely will not come up with washing machines.

This is at least my understanding of how the BoA of the EPO would approach such a situation; see e.g. T 25/13 (¶ 2.3).

It will be interesting to see a case being decided at the FPC where this issue is decisive.

claim construction

The decision provides further guidance on how the specific embodiments are to be considered in claim construction. The FPC had previously held that the claims are to be construed such that the embodiments are literally covered; I had long been troubled by the generality of the statement, see e.g. this Blog here.

In the present decision, the FPC clarified that this should be so ‘in case of doubt’.

More specifically, the decision holds that the rule of ‘literal coverage’ shall only apply when the claim can be reasonably construed in several ways. In such cases, the claim shall be construed such that the specifically disclosed embodiments are literally covered.

A much appreciated and highly relevant clarification about claim construction, in line with e.g. X ZR 35/11 (‘Zugriffsrechte’) of the German Supreme Court.

UPDATE 6 November 2020:

The decision has been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

HOYA Surgical Optics GmbH
./.
Alcon AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Philipp RÜFENACHT
    • Dr. Tobias BREMI

Judge-rapporteur:

    • Dr. Philipp RÜFENACHT

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Michael RITSCHER (MLL)
    • Livia ANDERMATT (MLL)
    • Dr. Claudia BIBUS (Blum), assisting in patent matters
    • Joel HOCHREUTENER (Blum), assisting in patent matters
    • n/a (Eisenführ Speiser), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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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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Saurer’s HeatCut system held to infringe Lässer’s EP 1 983 083 B1

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

The main hearing in this matter took place on 27 January 2016; see this Blog here for a report on the hearing and some background information on the subject-matter at stake.

Independent claim 1 of the patent in suit (EP 1 983 083 B1) reads as follows:

1. Method for applying flat pieces of material of any desired form onto an embroidery base (Fig. 6: 42) by means of an embroidery machine, wherein at least one material layer is arranged above the embroidery base (42) and, controlled by the program of the embroidery machine, a relative movement is produced between a cutting device (47) and the material layer (Fig. 6: 44), and, as a result, a flat piece of material of the desired form is cut out of the material layer (44), characterised in that the cutting is carried out by a heatable tip (47) and the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

Yet another independent claim 7 of EP’083 is directed to the device as such and reads as follows:

7. Device for an embroidery machine, for applying flat pieces of material onto the embroidery base (42), for example figures made of another material (44) and/or of another colour than the material of the embroidery base, by embroidering in place, comprising a support (45) for securing the device to an embroidery machine, a heatable tip (47) for cutting the material layer (44) used for the application and means (57, 59) for bringing the heatable tip out of the inoperative position into the cutting position and vice-versa, characterised in that a spacer (55) is provided at the heatable tip (47), which is adjustable in order to determine the penetration depth of the tip (47) into the material layer (44), such that the tip only penetrates into the material layer (44) which is to be cut.

Already the interim assessment of the reporting judge had not been in favor of the defendant, neither concerning infringement nor with respect to the plea of nullity. That did not change anymore, the board of judges essentially followed this assessment.

1.   Nullity

Lack of novelty was not an issue; only inventive step was under dispute. Some discussion apparently concerned the definition of the person skilled in the art. The FPC holds that the person skilled in the art is to be defined in view of the closest prior art that has been chosen — as is the case with the objective technical problem to be solved, too (r. 4.9.2).

The defendant inter alia argued that the patent lacked an inventive step over D1 (JP-A-05-261187). Translation of this document was problematic. I understand from the decision that the defendant apparently only filed a machine translation — at least in first place. While r. 4.3 holds that an ordinary translation has (only) been filed with the defendant’s comments on the interim assessment of the reporting judge, r. 4.9.3 holds that no ordinary translation has been filed at all. In any event, machine translation of patent documents in Japanese language is often confusing. D1 does not make an exception in this respect; the machine translations of the abstract and the specification of D1 that I have obtained from the JPO will give you an idea of just how puzzling such translations sometimes are.

In any event, D1 apparently concerns a sewing machine that also encompasses an embroidery function, incl. a heatable tip (4/5).

However, D1 does not further specify whether M (see figures) is only a frame or a solid table. Moreover, D1 neither discusses cutting of a mulit-layer material, nor any adjustment of the depth of penetration of the tip. The FPC held that the person skilled in the art would not have arrived at the claimed invention relying on D1 alone. Further, the FPC held that the person skilled in the art would not have consulted D2 (pertaining to a laser cutting system) — but even if D2 would have been considered, a spacer would still be missing.

Yet another document was considered in combination with D1. At least a kind-of-document, i.e. paragraph [0006] of the patent in suit. This paragraph [0006] of the patent reviews the prior art document DE 44 26 817 A1. The document as such has apparently not been introduced into the proceedings; paragraph [0006] of the patent is referred to as D4 in the decision. The decision casts some doubt on whether this paragraph [0006] of the patent itself can be considered as prior art. But even if it was considered, a spacer would still be missing.

The decision also discusses an alleged lack of an inventive step over D4 (reviewing DE 44 26 817 A1) as closest prior art. However, it was not held obvious (from D4 alone or in combination with D1) to replace a laser system with a heating tip and to further include a spacer. A further combination with US 3,902,042 (D3) did not succeed, either.

Finally, the defendant had submitted JP 82 43 776 A only belated, without any justification according to Art. 229 CPC for the late submission. The document has not been considered anymore.

In sum, the FPC held that the prior art on file did not prejudice validity of the patent in suit.

2.   Infringement

The invention is all about a cutting technology in embroidery machines which relies on a heatable tip. This heatable tip (47) and a spacer (55) provided at the tip can be seen e.g. in Fig. 3 and Fig. 3a of the patent; see also paragraph [0017] of EP’083 for further details on the spacer.

EP 1 983 083 B1, Fig. 3 and 3a
EP 1 983 083 B1, Fig. 3 and 3a

A key issue in this case is whether the HeatCut fabric pressers are spacers (55) in the sense of the patent in suit. Let’s recall the HeatCut configuration:

O2014_009_featured_image
Front page illustration of HeatCut brochure

The black tip in the middle of the picture is the heating tip. The silvery bars that are intermittently arranged on top of the fabric are so-called fabric pressers.

The FPC held that the claims do not require the spacer and the heatable tip to be provided on one an the same structural unit (this is only an embodiment according to Fig. 3/3a above, but not mandatory). According to claim 1, the spacer only has to be provided sufficiently close to the heatable tip to fulfil its function, i.e. to determine the penetration depth into the material layer:

[…] the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

From the evidence on file, the FPC had no doubt that the fabric pressers are arranged exactly like that and for the very same purpose in the attacked embodiment; infringement of claim 1 was thus established.

Infringement of claim 7 was a bit more tricky. The plaintiff had argued in first place that the support (45) is not part of the claimed device. A prayer for relief including the support was only presented as an auxiliary request, and only this auxiliary request was finally allowed on the basis of the support identified in the illustration below.

Illustration of the support
Illustration of the support

The FPC clearly held that the support is part of the device as claimed and thus dismissed the higher-ranking request. This is also why the plaintiff got stuck with a share of 1/5 of the costs. But on the merits, the patent was held valid and infringed.

As to the cost, the FPC held that internal costs for patent attorneys employed with the group of companies of the defendant cannot be considered at all; these costs are not necessary expenses according to Art. 3 CostR-PatC.

Der von der Beklagten geltend gemachte patentanwaltliche Aufwand ist durch die Inanspruchnahme von konzern-internen Dienstleistungen entstanden und ist damit als interner Aufwand zu qualifizieren, für den unter dem Titel notwendige Auslagen kein Raum ist.

In addition to injunctive relief, the defendant has also been ordered to provide accounting on the infringing acts. This right is based on Art. 66 lit. b PatA. That’s always annoying for parties held to infringe. Here, the defendant had requested the court to take appropriate measures to ensure that its legitimate interests are not infringed, such as business secrets (Art. 156 CPC). However, the legitimate interest remained unspecified. In any event, the FPC now clearly held that the right based on Art. 66 lit. b PatA cannot be limited by procedural measures. Based on the information to be provided within 60 days after the decision has become final, the plaintiff will next have to quantify his claim; Art. 85(2) CPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

Lässer AG Stickmaschinen ./. Saurer AG

Subject(s):

  • Infringement / claim construction
  • Spacer of embroidery machine

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • André ROLAND
  • Dr. Christian HILTI

Reporting judge:

  • Dr. Tobias BREMI

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of claimant:

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

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer)
  • Delia FEHR-BOSSHARD (Vischer)
  • Arndt HAMANN (Saurer, inhouse), assisting in patent matters
  • Bernhard RÜBER (Saurer, inhouse), assisting in patent matters

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