Roses are red; violets are blue — It’s all obvious! Well, is that true?

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Case Nos. O2016_010, O2016_011 | Hearing of 20 March 2019

Twice upon a time …

I have attended the main hearings in both these nullity cases, i.e. O2016_010 relating to EP 2 347 250 B1 (see EPO Register and Swissreg ) and O2016_011 relating to EP 2 352 018 B1 (see EPO Register and Swissreg). Note that EP’018 is based on a divisional application of EP’250.

The inventions are all about the capacitive testing of yarns or fabric, wherein the dielectric property of a capacitor arrangement is determined.

Patentability

It became clear from the pleadings that the defendant’s main request in both cases was that the patent be maintained in amended form only. In my understanding, the expert-opinion of the judge-rapporteur had held that the main request in O2016_010 / EP’250 was allowable, but not in O2016_011EP’018.

Novelty has not been an issue anymore, in both cases. Only obviousness, undue extension of subject-matter (interim generalisation) and clarity (of the additional feature) have been discussed. D2 (US 4,843,879; referred to in EP’250, ¶[0007]) was apparently agreed to be the closest prior art, and was combined in the assessment of obviousness with either D4 or D11 — both of which have unfortunately not been identified.

For me as a chemist, the highlight of the day was the plaintiff’s emotional release:

That’s not chemistry here; it’s physics!

The formulation of the ‘objective technical problem’ was quite a big deal in the hearing. This is what EP’250 says in ¶[0009] (emphasis added):

It is therefore the aim of the present invention to provide a method for the symmetry adjustment of a device for the capacitive examination of a moving elongated textile test sample which does not have the above disadvantages. The device should be simple, fast, cost-effective and, in particular, automatically adjustable.

Flower power, with roses in particular

Now, can automation be considered as the ‘objective technical problem’? In the plaintiff’s view, the ‘in particular’ is an emphasis of the aim of automation. The defendant disagreed: Automation was an add-on, and the other advantages could well be realised without automation. On the funny side, the following example has been used:

She likes flowers, in particular roses.

Now, imagine that the rose-loving woman visits a florist. Which flowers will she recognise first, amidst all the other flowers? The roses, of course!

Costs

Compensation of the ‘necessary expenses’ for the assisting patent attorney pursuant to Art. 3 lit. a and Art. 9(2) CostR-PatC was yet another point of discussion. The plaintiff requested reimbursement of about kCHF 45 for each case and argued, that the defendant triggered the additional costs because the amended claims had only been filed with the rejoinder which then had effectively restarted the whole discussion. I did not get the value in dispute, but the presiding judge indicated that kCHF 45 is about twice as much as the amount that would be awarded for legal respresentation, i.e. ‘according to the tariff’ that is based on the value in dispute.

Now, why is that important?

Since O2012_043, the FPC’s practice is that, as a rule, the ‘necessary expenses’ for the patent attorney may well be within the same order of magnitude of the costs for legal representation. But what about nullity cases? A patent attorney could do that on his/her own, without any legal representative; Art. 29(1) PatCA. Compensation would then be awarded according to the tariff for legal representatives; Art. 9(2) CostR-PatC.

The defendant questioned whether costs incurred for the assisting patent attorney are ‘necessary expenses’ at all, on top of the costs for legal representation according to the tariff, if he/she could have done the whole case on his own.

Use of the technical infrastructure in the court room

It is quite hard for the public to follow the arguments when the representatives just argue with acronyms and references. It’s sometimes frustrating, but I got used to it. But still, one of the basic ideas of a public hearing is to give the public the opportunity to follow the proceedings, isn’t it? But how would you even get a glimpse of what is really at stake when the parties only refer to ‘EP’111’ or ‘D1’ or ‘feature 1da’. That’s not information — it’s just noise.

I was very happy that the recent hearing in case S2018_006 was different (see this Blog here): Whenever someone referred to a specific document, the President put the same on the screen for it to be easily recognisable by the whole audience and the judges; projector and screen are fixedly installed in the ceiling anyway (see yellow arrow in the image below). Much appreciated!

Let there be information …

But that’s not only great for the audience; I strongly feel that it is also beneficial for representatives when arguing their case. When referring to a certain paragraph in a specific document in your pleadings, or a technical drawing, you always want to make sure that all the judges are on the same page, right? But how would you know that, with the judges sitting on a podium that even has an elevated front side that makes sure that nobody reveals a hand up there, behind the monitors. Yes, there are fixedly installed monitors (green arrows in the above image).

Now, did they all pick up the document that you are upon to discuss? You never know. So, why not actually use the monitors that each judge has in front of him/her, and the projector/screen for the audience, to make sure that everybody sees what you want to be seen? I could not think of any more powerful way to focus the discussion and thoughts on a specific argument.

Unfortunately, it didn’t work out that way in this hearing even though the defendant suggested it. I hope this was for technical reasons only, and does not indicate a general change of practice again.

Reported by Martin WILMING

BIBLIOGRAPHY

Case Nos. O2016_010, O2016_011 | Hearing of 20 March 2019

Gebr. Loepfe AG
./.
Uster Technologies AG

Panel of Judges:

  • Frank SCHNYDER
  • Dr. Tobias BREMI
  • Christoph MÜLLER

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kurt SUTTER (Blum), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Dr. Pavel PLISKA (inhouse)

O2016_010

Official announcement:

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Patent in suit:

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O2016_011

Official announcement:

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Patent in suit:

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Infringement of a patent in good faith?

Case No. O2014_012 ¦ Decision of 23 September 2014 ¦ “Beendigung des Verfahrens ohne Entscheid; Kostenfolgen; kein Klageüberfall”

This court order of 23 September 2014 has been published only recently.

The story is quickly told: The plaintiff had sued the defendant for patent infringement. In his answer, the defendant immediately submitted to the requests for injunctive relief. Thus, only the allocation of costs remained to be decided. As a general rule, procedural costs are charged to the unsuccessful party. If no party is entirely successful, costs are allocated in accordance with the outcome of the case; see Art. 106 CPC. In a nutshell, the defendant argued that he had not been aware of the plaintiff’s patents beforehand. The plaintiff should have sent a warning letter before going to court. If he had done so, costs could have been avoided. The defendant thus invoked Art. 107 lit. f CPC and argued that there are “other extraordinary circumstances that would result in an allocation according to the outcome of the case being inequitable.”

The FPC held that the defendant essentially argues to have acted in good faith. Every person must act in good faith in the performance of his obligations; see Art. 2  CC. There is no good faith anymore if one knew, should have known or could have known of the non-conforming legal position. No person may invoke the presumption of good faith if he has failed to exercise the diligence required by the circumstances; see Art. 3(2) CC. Now, what is in fact required by the circumstances? In O2013_007 (r. 4.3), the FPC has already expanded on this issue:

There is no general obligation to conduct investigations — but if one has reason to suspicion, one has to clarify the situation.

In the present case, the defendant is not an end-user but rather a retailer. The FPC held that a retailer must clarify the patent situation if there is a risk of infringement. Such a risk was held to be clearly given in the present case. The plaintiff is apparently a renowned manufacturer typically seeking patent protection. The allegedly infringing products were technically and functionally very similar. Thus, the risk of a patent infringement should have been obvious for the defendant. He could thus not invoke the presumption of good faith and costs were allocated in accordance with the outcome of the case, i.e. the defendant has to bear the costs inasmuch as the requests for injunctive relief are concerned. But the plaintiff had also requested a rather prominent publication of the decision in trade journals in Germany and Switzerland. Later on, this request was withdrawn. Thus, the plaintiff was unsuccessful with this request. At first sight, one might have expected that the requests for injunctive relief were to be weighed higher than the request for publication. But the defendant had only sold two devices (a third one was apparently ordered by the plaintiff), and there was no reason to assume that the business would have extended. On the other hand, the publication in trade-journals would have globally blemished the defendant as a patent infringer.

Concluding, the FPC allocated the costs by half, and no party compensations were awarded.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_012 ¦ Decision of 23 September 2014 ¦ “Beendigung des Verfahrens ohne Entscheid; Kostenfolgen; kein Klageüberfall”

(not identified) ./. (not identified)

Subject(s):

  • Kosten: Parteientschädigung

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Robert BRINER (CMS)
  • Peter STEINEGGER (SBMP), assisting in patent matters

— FULL TEXT OF THE DECISION —

Download (PDF, 67KB)

O2012_036: Main hearing of 17. January 2014

Case No. O2012_036 ¦ Main hearing of 17 January 2014

An order on information and accounting was granted in this matter in February 2013; please have a look at the earlier post with details about the subject-matter at stake. At the main hearing of 17 January, the defendant struggled heavily with his obligation on information and accounting pertaining to the actual number of infringing devices. Plaintiff estimated the value in dispute to CHF 25’000,–. Finally, the parties entered into (non-public) settlement discussions.

Reported by Martin WILMING and Oliver JEKER

BIBLIOGRAPHY

Case No. O2012_036 ¦ Main hearing of 17 January 2014

WorldConnect AG ./. Pearl Schweiz GmbH

Subject(s):

  • Patent infringement
  • Compensation

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. rer. nat. Tobias BREMI (Referent)
  • Dr. iur. Mark SCHWEIZER
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant: