Hip Hip Hooray: Stemcup and Implantec litigating about the ANA.NOVA hybrid socket

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Case No. O2016_012 | Hearing of 29 May 2019

The patent in suit is EP 1 411 869 B1; see Swissreg and EPO Register for further information. Stemcup alleges that Implantec‘s ANA.NOVA® hybrid socket infringes the patent (either literally or under the DoE):

Implantec’s ANA.NOVA® hybrid socket website

See Implantec's ANA.NOVA® product flyer for further information about the allegedly infringing product.

Defendant (1) is the Austrian manufacturing company of the allegedly infringing ANA.NOVA® hybrid socket, which defendant (2) is then placing on the Swiss market.

The relevant claim 2 of EP’869 as initially granted reads as follows:

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

ANA.NOVA® hybrid socket

To get a better idea of what is meant by ‘knock-in web (21)’ (or ‘Einschlagsteg’ in German), please see the winglets on the outer shell of the allegedly infringing product on the right.

According to the patent, the locking elements can twist the cup by a few degrees when the implant is driven in. In the plaintiff’s view, this is decisive for the patent in suit. Defendants contest the infringement and argue for invalidity as a plea in defense.

This case surfaced for the first time back in March 2017; see this Blog here. But one got no idea of the subject-matter at stake since that order only related to a procedural issue. The main hearing had been announced for 3 October 2018 for the first time, but it was cancelled. The silence was deafening since then. Finally, the main hearing took place on 29 May 2019, as announced.

The hearing

It is rare that a presiding judge at the FPC opens the main hearing with a remark that the case is somewhat special. But this case is indeed a bit out of the ordinary. In my understanding of the pleadings, the expert opinion of the judge-rapporteur had been quite positive for the plaintiff re infringement and validity — except for an undue extension of subject-matter in claim 2 as asserted.

Closed docket

Now, what to do after the formal closure of the file?

The plaintiff partially renounced EP’869 at the IPI, to overcome the objection. The partial renouncement has been published on 15 August 2018.

Claim 2 after the partial renouncement reads as follows (inofficially translated; changes marked-up):

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

A first version of this post erroneously mentioned that only ‘at least’ had been deleted. This has been corrected in the above.

What had been uncomplicated on the merits at the IPI caused a lot of trouble in the pending proceedings at the FPC: The panel of judges had been enlarged to five judges, with the clear intention to render a decision on all aspects of the case. Consequently, the judge-rapporteur gave a second, updated expert opinion which, in my understanding, was again very positive for the plaintiff’s position re infringement and validity, but did not expand any further on the tricky issue of admissibility of the partial renouncement.

Noteworthy, the plaintiff’s statement of claim had not been changed. It was not in dispute between the parties that it was not a question of an amendment to the statement of claim; Art. 227 CPC. It’s all about whether or not the partial renouncement of the patent at this stage of the proceedings was admissible as a proper novum or improper novum, according to Art. 229 CPC.

The plaintiff holds that the partial renouncement is a proper novum that has been timely introduced into the proceedings, i.e. immediately upon registration with the IPI.

On the other hand, defendants essentially argue that a new fact created by the plaintiff’s own volition and at a time / to an extent of his own choice cannot be considered a proper novum, and that the plaintiff acted much too late in any event: The request for partial renouncement had been filed only about nine months after the defendants had raised the issue of an undue extension of subject-matter with their rejoinder. Defendants requested that the case be dismissed as groundless since the patent in suit does not exist anymore in the form as it once had been asserted.

Some further procedural issues arose with respect to admissibility of certain elements of defendants’ comments on the second expert opinion of the judge-rapporteur. Plaintiff requested in the hearing that it should be decided on this issue beforehand, for him to be in a position to comment the remainder, if any. This request was denied.

Further, defendants had prepared a slide deck to illustrate certain aspects of their pleading concerning the alleged infringement (presumably some tricky geometric concepts of how to properly measure a gradient, according to the patent in suit), and printouts of this slide deck had been handed over to the plaintiff and the judges before a break. Finally, however, the slide deck had not been used at all: The presiding judge returned the handouts to defendants’ counsel after the break and noted that the court will not expose itself to the accusation that it accepted novae into the file. Still, I well understood from the pleadings that defendants argue for non-infringement because the gradient in the attacked embodiment is outside of the claimed range. It’s a borderline case, apparently: Plaintiffs allege that the gradient is 84.7° (i.e. within the claimed range), while defendants allege that the gradient is 85.6° (i.e. outside the claimed range).

Unfortunately, I had to leave at about 2:15 pm and thus don’t know whether the parties finally had settlement talks. But, frankly, I would be surprised if the parties have settled.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_012 | Hearing of 29 May 2019

Stemcup Medical Products AG
./.
(1) Implantec GmbH
(2) ImplanTec Schweiz GmbH
(now Endoprothetik Schweiz GmbH)

Panel of Judges:

  • Dr. Christoph WILLI
  • Frank SCHNYDER
  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Kurt SUTTER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Stemcup :

Representative(s) of Implantec:

  • Dr. Michael RITSCHER (MLL)
  • Noelle STALDER (MLL)
  • Dr. Martin MÜLLNER (Müllner Katschinka), assisting in patent matters
  • Werner Roshardt (Keller), assisting in patent matters
  • Dr. Susanne FINKLENBURG (Keller), assisting in patent matters

ANNOUNCEMENTS

Main hearing of 29 May 2019:

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Main hearing of 3 October 2018 (cancelled):

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The FPC’s cancellation note:



PATENT IN SUIT

EP 1 411 869 B1 (as initially granted):

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CH/EP 1 411 869 H1 (after partial renouncement):

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NOTES FROM THE HEARING

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Litigation on clamping systems: Matter fixed?

Case No. O2012_016 ¦ Main Hearing of 03 December 2014

This case pertains to clamping systems for compacting of metal and ceramic powder. Parties to the proceedings are Erowa AG as the plaintiff and ProGrit GmbH as the defendant.

The allegedly infringing devices of the defendant are abbreviated as RCS (roller clamping system) and SCS (segmented clamping system). Screenshots taken on 06 January 2015 from the defendant’s website are embedded below.

Note that the roller clamping system RCS is not available in Germany and Austria, but rather only a

new version RCS II without heightended surface sections at the chuck.

From the hearing, it became evident that this suit had been lodged already more than 5 years ago; it had thus been transferred to the FPC from a formerly competent cantonal court. Moreover, the parties have been before courts in other jurisdictions on this matter, too (see references below for each of the patents in dispute). Noteworthy, Progrit’s managing partner Dietmar Walter Kramer had been Head R&D at Erowa until 2004 (cf. CV, as found online on December 24, 2014; markup added).

1.  THE PATENTS IN SUIT

i)  The Swiss part of EP 1 068 918 B1

The first patent in suit is the Swiss part of EP 1 068 918 B1. Please see Swissreg for the bibliographic details.

As indicated above, this matter was also litigated elsewhere, e.g. in Germany. Please see DPMAregister for bibliographic details of the German part of the European patent. In Germany, the patent has most recently been upheld in amended form, published as DE 500 08 295 C5; see the decision 4 Ni 43/10 (EP) of the German Federal Patent Court (issued 08 November 2012) and the decision X Zr 148/12 of the German Supreme Court (issued 29 July 2014); and a correction thereof.

The courts in Dusseldorf dealt with the corresponding infringment proceedings; see decision 4a O 270/09 of the Dusseldorf Regional Court (LG) and decision 2 U 29/13 of the Dusseldorf Higher Regional Court (OLG). The decision of the OLG already takes into account the amended wording of the patent as upheld by the Supreme Court with decision X Zr 148/12 (see above).

ii)  The Swiss part of EP 1 068 919 B1

The second patent in suit is the Swiss part of EP 1 068 919 B1. Please see Swissreg for the bibliographic details.

The German counterpart was also litigated in Germany. Please see DPMAregister for bibliographic details. In first instance, the German Federal Patent Court decided to maintain the patent in amended form; see decision 4 Ni 20/11 (EP) of 24 September 2013 (the decision is res judicata).

Again, corresponding infringement proceedings were dealt with by the Dusseldorf courts; see decision 4a O 84/10 of the Dusseldorf Regional Court (LG) and decision 2 U 58/11 of the Dusseldorf Higher Regional Court (OLG).

iii)  CH 699 547 B1

The third patent in suit is CH 699 547 B1; see Swissreg for the bibliographic details.

2.  WHAT THE HEARING WAS ALL ABOUT

The hearing was somewhat exceptional in that the discussion did not concern technical matters at all. Rather, pleadings revolved around highly interesting points of law.

i)  Allowable submissions after closure of the file

last chance
Not always that clear

A first issue relates to the restriction of the request for injunctive relief. It was undisputed that a restriction of the request for injunctive relief constitutes a limitation of the claim which is explicitly permitted at any time; see Art. 227(3) CPC. However, the right of the plaintiff to present new facts in support of such a restricted request was under dispute. Note that the amendment(s) to the requests were made only after the second round of written submissions, i.e. when the closure of the file (“Aktenschluss”) had already occured; see Art. 229(2) CPC and the decision 4A_73/2014 (r. 6.3.2.3) of the Supreme Court. Go figure: Being allowed to limit your request for injunctive relief, but not being allowed to freely argue in support of this limited request? That’s a nasty situation for a plaintiff!

The plaintiff argued that Art. 227(3) CPC should overrule Art. 229 CPC. Otherwise, a limitation of the claim (which is explicitly permitted in Art. 227(3) CPC at any time) would be impossible in patent infringement proceedings. In practice, it is rather unlikely that a patentee would be in a position to argue in support of infringement of a limited request and validity of a limited patent claim (see below) without having to present new facts. You cannot reasonably stockpile for each and every situation that might occur, be it a decision of a foreign court in co-pending proceedings on the same patent family, or new prior art that comes to light.

Moreover, the plaintiff argued that even the requirements of Art. 229 CPC were fulfilled for all patents in suit, essentially as follows:

The decision of the German Federal Supreme Court with respect to the German counterpart of the first patent in suit (see above) constitutes proper nova; see Art. 229(1) lit. a CPC and the decision 5A_568/2012 of the Swiss Federal Supreme Court, r. 4. Moreover, the patentee / plaintiff had partially surrendered the patent vis-à-vis the Patent Office (Art. 24 PatA) to bring the wording of the claim in line with the decision of the German Supreme Court. This would also constitute a new fact and the patentee / plaintiff should be allowed to present new facts in support of validity and infringement of the limited claim (like in the corresponding proceedings in Germany, see above). Note, however, that the limitation had not yet been published at the date of the hearing, and the FPC apparently dismissed a request of the patentee to postpone the hearing until publication of the limitation.

With respect to the second and the third patent in suit, the plaintiff argued that the preliminary assessment of the reporting judge and the decision 4 Ni 20/11 (EP) of the German Federal Patent Court constitute nova according to Art. 229(1) CPC, and that it should likewise be allowed to present new facts in support of validity and infringement of correspondingly limited claims that address these newly raised issues.

In sum, this boils down to three scenarios of limitations to a patent claim / request for injunctive relief: Is it allowed to present new facts in support of a limited claim / request, when the limitation is occasioned by: –

  1. … a corresponding decision in another country?
  2. … a statement in the preliminary assessment of the reporting judge?
  3. … a partial surrender of the patent?

ii)  Limitation under Art. 24 lit. c / partial invalidity

The patentee / plaintiff asserted that the patents in suit are valid and infringed on the basis of independent patent claims that were to be limited by incorporation of features taken from the description (i.e., not a combination of an independent claim with a dependent claim).

In the present proceedings, the defendant did not lodge a counterclaim for nullity but rather argued for nullity as a mere plea in defense. Apparently, the FPC had indicated to the parties in writing beforehand that it is doubtful whether it is possible at all to limit a claim on the basis of a feature taken from the description vis-à-vis the FPC, or if this shall only be possible when a counterclaim for nullity had been lodged (see Art. 27 PatA). E. Brunner in Der Patentverletzungsprozess (SMI 1994, p 127) favours the latter. Even though the plaintiff / patentee fiercely rebutted this view, the prior information from the FPC had prompted the plaintiff / patentee to declare the partial surrender of the patents vis-à-vis the patent office before the hearing. The partial surrender had not yet been officially published when the hearing took place, but had already been approved by the patent office.

A decision of the FPC on these highly interesting points of law would definitely make a good read. However, the parties finally entered into settlement negotiations and it remains to be seen if a decision will be issued at all.

Reported by Susanna RUDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2012_016 ¦ Main Hearing of 03 December 2014

Erowa AG ./. ProGrit GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President; Judge)
  • Dr. Tobias BREMI (Judge)
  • Dr. Kurt SUTTER (Reporting Judge)
  • Esther SCHEITLIN (Court Clerk)

Representative(s) of Plaintiff:

  • Dr. Thierry CALAME (Lenz & Staehelin)
  • René RUF (Rottmann, Zimmermann + Partner), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Mark SCHWEIZER (MLL)
  • Dr. Reinhard OERTLI (MLL)
  • Willi LUCHS (Luchs & Partner), assisting in patent matters