This decision provides very early insight into a litigation with an apparently rather complex setup. The plaintiff had initiated main proceedings on January 11, 2017, inter alia alleging co-ownership of two patent families currently held by the defendant. Only two days later, the plaintiff requested ex parte interim measures, i.e. that the defendant be ordered to preserve the status quo of the patent families in suit (with respect to ownership, licenses, etc.), and that a ban be noted in the Swiss patent register to prevent any changes to the Swiss part of the already granted European patent.
Allegedly, an employee of the Swiss plaintiff has largely contributed to the subject invention(s), in a joint development together with the CEO of the defendant (a company domiciled in Sweden). Two patent families are at stake, with an already granted European patent in the first family. EPO prosecution is still pending in the second family, while patents have already been granted in the U.S., Japan and Russia.
First, the President holds that the FPC only has territorial jurisdiction for the Swiss part of the European patent at stake; Art. 1(2) IPRA, Art. 31 LugC, Art. 10 lit. b IPRA. Note that the patentee / defendant is domiciled in Sweden! The request has thus not been considered at all as far as it concerned foreign patent rights.
What remains is the Swiss part of the already granted European patent. Swiss law is applicable in this respect; Art. 110(1) IPRA. In general terms, the requested injunction and the order to a register authority would be possible in accordance with Art. 262 lit. a and c CPC. However, the President held that the plaintiff failed to show the three necessary elements, i.e.
that the employee of the plaintiff has contributed to or made this invention (what exactly, when, where and how);
how the defendant has been made aware of this invention (or parts thereof); and
how the subject-matter claimed by the defendant actually corresponds to this invention.
The plaintiff apparently did not discuss how the contribution of its employee is reflected in the claims; see item iii, above. Co-ownership was thus held to be not established for this reason alone.
Moreover, the President notes that the plaintiff failed to show an actual risk that any of the acts to be prohibited might materialize. The request also failed for this reason.
The routine exercise: Who are the parties?
Admittedly, that’s been a tricky puzzle this time. The decision is anonymized beyond recognition. Almost. We could spot a single perfect fit:
1. Art. 72 PatA: Request for an order to cease and desist a patent infringement.
For a request for an order to cease and desist a patent infringement to be admissible it must contain a detailed description of the incriminated act. This description must be sufficiently specific such that a purely factual examination is sufficient to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous technical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements (r. 17).
2. Art. 26 PatA; Art 8 CC: Burden of allegation if a party raises a ground for nullity of a patent.
If a party raises a ground for nullity the assessment of which involves the skilled person [and] his common general knowledge, this party bears the corresponding burden of allegation, i.e. it must specifically name the skilled person (defined according to education and/or profession) and his common general knowledge (in particular the extent of the pertinent technical knowledge supposed to be known to him at the relevant date). If such a specific allegation is not put forward the ground for nullity will be dismissed (r. 19-20 and 31-32).
3. Art. 125 PatA; Art. 51PatA: Prohibition of double patenting.
The loss of effect of the Swiss patent due to the existence of a European patent for the “same invention” with the same effective date according to Art. 125(1) PatA is subject to the condition that the same technical teaching is protected by the claims of both patents (r. 37).
1. Procedural History
Richemont International S.A. had sued De Grisogono S.A. for patent infringement before the Civil Court of the canton of Geneva on 15 July 2008. The defendant delivered his answer on 04 November 2008 (the year 2011 given in the decision on p.6 is evidently a typo), argued for non-infringment, lodged a counterclaim for nullity of the patent in suit and requested that the infringemenent action be held an act of unfair competition. As an auxilliary measure, the defendant requested to appoint an expert. With his reply of 30 January 2009, the plaintiff inter alia requested that three experts were to be appointed. The rejoinders were filed on 27 April 2009 (defendant) and 12 July 2009 (plaintiff), respectively.
Finally, three experts were appointed: René BESSON (horologist), Ronald NOLL (patent attorney) and René ADDOR (horologist). BESSON and NOLL submitted a joint opinion on 05 April 2011; ADDOR completed his opinion on 13 June 2011.
The Civil Court of Geneva decided to transfer the case to the Federal Patent Court on 26 January 2012. The parties were invited on 23 October 2012 to comment on the two expert opinions. They filed their comments on 14 January 2013, and the plaintiff put the competence of the FPC into doubt. The main hearing took place on 05 November 2013 (extra muros in Fribourg).
2. The patent in suit
The patent in suit is CH 695 712 A5 of Richemont International S.A.; for bibliographic details and legal status, see Swissreg. In brief, independent claim 1 pertains to a mechanism to display a date from two separate numbers, comprising
a first annulus (1) with a first set of digits and a toothing at its inner circumference to drive it;
a mobile (9,10) with a plate (9) comprising a second set of digits and a part (10) with a multitude of teeth and wherein the plate (9) is partially arranged on top of the first annulus; such that at each stable position of the first annulus (1) and the mobile (9,10) a digit of the first annulus (1) and a digit of the mobile (9,10) are arranged side by side in a frame or two parts (2,13) of a frame;
characterized in that the mobile (9,10) is pivot-mounted outside of the first annulus (1) and wherein the first annulus (1) comprises a toothing (14) also at its outer circumference, interacting with the teeth of part (10).
For ease of reference, an illustrative figure and the original claim wording in French language is given below:
The mechanism can be best understood on the basis of Fig. 1-3 of CH 695 712 A5 (excerpts of which are given below) showing the sequence of a date switch:
An annotated picture of one of these watches had been filed by the plaintiff, for illustrative purposes:
4. What has been decided
4.1 Competency of the FPC
According to Art. 41 PatCA, the Federal Patent Court shall, where it is competent, adjudicate in cases that are pending before the cantonal courts, provided that the main hearing has not yet been held. The procedure of taking evidence had not yet been concluded, and no main hearing had taken place. Thus, the cantonal court referred the case to the FPC.
On the subject matter of the case, the competency of the FPC is evident (Art. 26 PatCA).
4.2 Wording of the requests
The wording of the request essentially recites the wording of the only independent claim 1 of the patent in suit. Don’t assume that this is typically the case. Formal requirements for such requests are harsh and sometimes difficult to meet in view of the decision 131 III 70 of the Supreme Court. For a request for an order to cease and desist a patent infringement to be admissible it must contain a detailed description of the incriminated act. This description must be sufficiently specific such that a purely factual examination is sufficient to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous tehcnical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements. This was held to be the case here. (But beware: It is more an exception than the rule that recitation of the claim wording is sufficient.)
4.3 On the merits of the patent
Besides the alleged infringment of CH 695 712 A5 (see 4.4, below), the FPC had to deal with validity issues since the defendant raised a counterclaim of invalidity (see 4.3.1 to 4.3.4, below). Note that Swiss patent applications are only formally examined but not on the merits, i.e. for novelty and inventive step. (A pre-examination on the merits had been introduced for certain inventions in the textile and watch industry with an amendment of the PatA in 1954, but this has been abolished again in 1996.)
4.3.1 Alleged undue extension of subject-matter
The amendments carried out during prosecution are discussed in the decision on the basis of the claim wording with tracked changes:
The amendments were found to be clearly and unambiguously derivable from the documents as filed. In any case, this would not have been a ground for nullity under Art. 26(1) c PatA, but would rather have resulted in a shifted filing date (Art 58(2) PatA effective until June 30, 2008; BGE 4A_109/2011 / 4A_111/2011, r. 4.1).
As a sidenote, the FPC emphasized that it is the understanding of the person of routine skill in the art that counts for assessment of the question of whether or not an amendment goes beyond of what can be clearly and unambiguosly derived from the application as filed. Thus, the person of routine skill in the art is to be identified beforehand, typically by means of his profession and/or education. Providing this definition is an obligation of the party who raises an argument or counterclaim that relies on the knowledge of the person of routine skill in the art. The defendant did not do so but rather only gave a general definition without any context to the technical matter at stake.
The defendant alleged a lack of novelty of the patent in suit over the following documents:
As can be concluded from Fig. 1 of the Valjoux patent (below, for ease of reference), the disk carrying the first series of digits (the upper disk in fig. 1) is not in the form of an annulus (couronne). Consequently, there is also no disclosure of an inner and outer toothing on the (missing) annulus. Novelty over the Valjoux patent was thus acknowledged.
Piguet discloses an annulus for the first series of digits, but without any outer toothing (but rather only two inner toothings). Moreover, the mobile (carrying the digits 0-3) is not is pivot-mounted outside of the annulus. Novelty over the Piguet patent was thus acknowledged. See Fig. 2 of the Piguet patent below, for ease of reference:
This piece of prior art was not alleged by the defendant in order to challenge novelty or inventive step (but rather only in the context of the alleged undue extension of subject matter). Nevertheless, ADDOR had discussed this document also for patentability issues — and the plaintiff did not object. Anyhow, novelty over the Jaeger-Le Coultre patent was acknowledged by the FPC: The mobile (carrying the digits 1-3) is not pivot-mounted outside of the annulus. Moreover, there is no outer toothing on the annulus that interacts with the toothing of the mobile. See Fig. 1 of the Jaeger-Le Coultre patent below, for ease of reference:
iv) JP 44-20619 (Aichi Tokai Denki)
This document had not been relied on by either of the parties. ADDOR had identified it in a search which had not been authorized or instructed by the FPC. Even worse, he came up with this document only two months after he had initially provided his opinion. The plaintiff could have objected against consideration of this document, but did not do so. Anyhow, novelty over the Aichi Tokai Denki patent was acknowledged for essentially the same reasons as outlined for the Valjoux patent above: It does not disclose an annulus being driven by an inner toothing and interacting with a mobile by means of an outer toothing.
Unfortunately, I could not find a pdf of this document, but at least the figure given in the decision is shown below for illustration purposes:
4.3.3 Inventive step
The FPC assessed the inventive merit on the basis of the so-called problem-and-solution-approach (see EPO Guidelines for Examination, G-VII, 5). The objective technical problem to be solved was identified in a simplification of the mechanism and a reduction of the number of pieces (see paragraphs  and  of CH 695 712 A5). There was no apparent incentive for the person of routine skill in the art to arrive at the claimed invention in an obvious manner; thus, the could-would-approach failed and inventive step was acknowledged.
4.3.4 Double patenting
The plaintiff is also owner of EP 1 296 204 B1. The European application and the Swiss patent CH 695 712 A5 had been filed on one and the same day, with apparently the same documents. However, the resulting scope after prosecution was different in both cases (I did not yet make a detailed comparison of the claim wordings). Thus, the FPC held that both patents are not directed to the same invention and therefore Art. 125 PatA does not apply.
The report BESSON/NOLL came to the conclusion that the patent in suit is infringed. From the report ADDOR, the FPC took the same conclusion (albeit implicitly). Taking both reports into due consideration, the FPC followed the conclusions drawn by BESSON/NOLL.
The primary counter-argument of the defendant was that the (let’s call it) structure 3 in the figure below was not an external toothing (“denture périphérique externe” in the original claim wording in French).
The ADDOR report provided the following illustration of the technical term tooth (dent; left side) and gudgeon (ergot; right side):
The FPC was not at all convinced that the so-called ergot was not a tooth. In fact, even in EP 1 612 628 B1 itself the structure 3 is referred to as a tooth (dent); see paragraph . The FPC held that also a single tooth constitutes a toothing according to the patent in suit.
5. In a nutshell
The defendant was ordered to cease and desist from using the invention, and to report on the sales figures of the infringing devices within a deadline of 60 days. The counterclaims of the defendant were dismissed. The decision can be appealed within 30 days.
For the background of the case and the underlying decision of the FPC in detail, please see this blog here. In brief, the FPC had ruled that it is competent to decide on claims for injunctive relief and damages, pertaining to infrastructure for collecting the performance-related heavy vehicle fee (HVF) levied in Switzerland.
The Swiss Confederation lodged an appeal against the decision of the FPC. For now, only the issues of competency of the FPC are at stake.
The Supreme Court ruled as follows:
1. Competency of the FPC with respect to injunctive relief
The Supreme Court stressed that a patentee’s rights are emanating from the Federal Act on Invention Patents which is part of the civil law. A patent is a property in the sense of Art. 26(1) of the Federal Constitution and as such is protected by the constitutional principle of guarantee of ownership (BGE 126 III 129, reasons 8a). The Confederation can be patentee, and on the other hand it has to respect patent rights. Consequently, the Confederation is not entitled to infringe a patent, even if it acts in public interest (reasons 2.3.1).
Das Gemeinwesen wird somit auch im Rahmen der Erfüllung öffentlicher Aufgaben vom Ausschliesslichkeitsrecht nach Art. 8 PatG erfasst und ist insoweit grundsätzlich dem patentrechtlichen Unterlassungsanspruch (Art. 72 i.V.m. Art. 66 PatG) ausgesetzt.
Thus, the Supreme Court confirmed: The Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA).
In a detailed obiter dictum (reasons 2.3.2 ff), the Supreme Court also expanded on the competency of the FPC to decide on a claim of the Confederation for a compulsory license in the interest of the public. In case of public, non-commercial use it is not mandatory that the Confederation tries to obtain a license under market-reasonable conditions prior to filing a suit to be granted a compulsory license (Art. 40(1) and Art. 40e of the Federal Act on Invention Patents; similar to Art. 31 lit. b TRIPS). The FPC has exclusive jurisdiction in such cases (Art. 26(1) lit a PatCA). Further, the Supreme Court briefly touched on the topic whether the injunctive relief (as a right conferred by a patent) could be subject to expropriation under Art. 32(1) Federal Act on Invention Patents, but did not provide further guidance in this respect.
2. Competency of the FPC with respect to damages
The plaintiff / respondent requested damages of CHF 62’466’022,85 based on civil law (Art. 73(1) Federal Act on Invention Patents; Art. 41 ff, Art. 62 ff and Art. 423 Code of Obligations). However, the Confederation is only liable under civil law in case of commercial activities, not in case of activities that concern a public function. The Supreme Court held that the use of the infrastructure and the collection of the HVF is undoubtedly carried out by the Confederation in a public function (see also BGE 128 III 76, reasons 1a in this respect).
Die strittige Verwendung der technischen Infrastruktur […] erfolgt unbestreitbar im Rahmen der Wahrnehmung einer öffentlichen Aufgabe. Eine gewerbliche Tätigkeit, die grundsätzlich Privaten wie Nichtprivaten offensteht und bei welcher die Erzielung von Gewinn eine Rolle spielt, liegt beim fraglichen Betrieb der technischen Infrastruktur nicht vor […].
Consequently, the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.
In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement with the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable.
The Federal Act on Invention Patents contains two clauses concerning the restriction of patent rights due to public interest: Art. 40 pertains to the grant of a licence in public interest to use an invention when such a licence is, without sufficient reason, refused by the owner of the patent; such licence is to be asserted in civil proceedings. The second clause (Art. 32) provides for the whole or partial expropriation of a patent by the Federal Council, if public interest so requires. This measure is governed by public law, according to the Federal Act on Expropriation (Art. 16 ff.). The FPC held that both regulations are not applicable in this case since the defendant did not initiate any one of the said actions beforehand, but instead put up with the consequences of a potential patent infringement.
The FPC also expanded on the argument of the defendant that the use of the HVF-registering infrastructure is of sovereign character: It was held that the relation to assessable persons (towards whom the Swiss Confederation acts in sovereign manner) is to be distinguished from the relation to the plaintiff.
Furthermore, the defendant argued that the case is to be dealt with under public law as the HVF-registration system was installed in accordance with a public submission procedure. However, the FPC held that this does not qualify the case as a matter of public law because it cannot be investigated in public law proceedings whether the patent of the plaintiff is infringed or not.
Finally, the FPC considered the various criteria developed by the Federal Supreme Court to distinguish between litigations governed by public and civil law (cf. inter aliaBGE 123 III 346, r. 1a; BGE 120 II 11, r. 2a). The FPC held that the plaintiff confronts the defendant as a coequal legal entity and that the requested legal remedies further support the assumption that civil law is to be applied to the present case.
Consequently, the FPC decided to consider the case as the competent court (Art. 59 para. 1 in conjunction with Art. 237 para. 1 CPC).
(Update 10 April 2013: This decision of the FPC was partly overruled by the Supreme Court; see this blog here.)
Reported by Martin WILMING and Jennifer BOESE
Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”
Case No. S2012_005 ¦ Decision of 13 June 2012 ¦ “Zulässigkeit eines Feststellungsbegehrens, unlauterer Wettbewerb”
In 2005 the plaintiff entered into an R&D contract with a professor (now defendant). The purpose of this contract was the development of a technology to provide highly porous pellets by using a liquefied propellant gas. More specifically, the envisaged R&D should include experiments concerning the solubility of certain binding agents in various propellants, with or without CO2. According to the contract, it was aimed to subsequently file patent applications based on such R&D; the plaintiff should be the patentee and the defendant should be named as the inventor. The defendant also agreed in the contract to offer any further idea in the field of the experiments (propellant gas technology) to the plaintiff.
The dispute pertains to a European patent later on filed by and granted to the plaintiff, entitled
Manufacturing of a rapidly disintegrating presentation starting from a solid powder and a step of freeze drying
Entitlement of the plaintiff to this European Patent was under dispute between the parties. The defendant denied that the R&D contract (focused on propellant technology) covered the subject matter of the European patent in suit.
A first aspect of this decision pertains to the competency of the FPC, since the plaintiff was domiciled in Switzerland while the defendant was domiciled in Germany. The R&D contract contained a choice of juridiction clause (seat of the plaintiff), in accordance with Art. 23(1) lit. a-c LugC, but applicability of the contract to the present subject matter was under dispute. The patent in suit was not put on file by the parties, and it could not be excluded a priori that the patent was also covered by the contract: The mere title as such does not rule out the use of a liquefied propellant. The FPC held that for deciding on the competency of the court, allegations made by the plaintiff which are of relevance for both the competency of the court and the justification of the complaint are to be assumed true; this is in line with the case law of the Federal Supreme Court (BGE 137 III 32, r. 2.2 and 2.3).
As to the merits of the case, the first request was in fact a request for declaratory judgement by interim measure. The FPC held that declaratory judgements ad interim are not available under Art. 262 CPC in cases pertaining to the ownership of intellectual property rights. The FPC did not consider the first request already for this reason. Moreover, the plaintiff did not even address the question of his legitimate interest in this declaratory judgement (as required by Art. 74 of the Federal Act on Invention Patents) – the request would not have been considered by the FPC for this reason, too. Finally, the plaintiff failed to address the threat of a not easily reparable harm (Art. 261 CPC); this would have led to dismissal of the request by the FPC (if it had been considered).
A second request was that the defendant should be obliged to refrain from any statements vis-a-vis third parties that the plaintiff was not the legitimate owner of the patent in suit. The FPC held that the plaintiff did not provide sufficient prima facie evidence of violation of a right to which he is entitled (Art. 261 CPC); no legal basis for his claim was indicated by the plaintiff. The statements made by the defendant were also held to not establish a case of unfair competition. As long as a statement of a subjective legal opinion is not unnecessary offending, it cannot establish a case of unfair competition:
Case No. S2012_009 ¦ Order of 12 June 2012 ¦ “Zuständigkeit für summarische Verfahren ausserhalb der exklusiven Zuständigkeit; keine besondere Dringlichkeit”
Hepp Wenger Ryffel AG / Martin WILMING is involved in this case on behalf of the plaintiff. No detailed comments on the merits will be made here. However, two legal aspects of this order may be of general interest:
First, the FPC held that its competency also extends to interim measures to be taken in cases of concurrent competency with cantonal courts (Art. 26(2) of the Federal Act on Invention Patents).
Second, the FPC expanded on the urgency of the case. If interim measures are requested without hearing the defendant (according to Art. 265 CPC), such request shall be made within one or two weeks after the plaintiff has taken note of the threat to be prevented. Seven weeks were found indicative of no outstanding urgency:
Hätte die Klägerin die Anordnung der Massnahme für so dringlich gehalten, dass keine Zeit für eine Anhörung des Beklagten bleibe, dann hätte sie das Massnahmebegehren auch umgehend – jedenfalls innert ein oder zwei Wochen – stellen müssen. Hat die [Klägerin] damit aber sieben Wochen zugewartet, dann ist sie offenbar selbst nicht von einer besonders dringlichen Angelegenheit ausgegangen, und deshalb ist es ihr nun verwehrt, genau diese zu behaupten.
The defendant was given an opportunity to make representations, in accordance with Art. 253 CPC.
Reported by Martin WILMING
Case No. S2012_009 ¦ Order of 12 June 2012 ¦ “Zuständigkeit für summarische Verfahren ausserhalb der exklusiven Zuständigkeit; keine besondere Dringlichkeit”