Case No. S2019_002 | Decision of 15 August 2019 | ‘PASCAL’
This infringement case is about EP 1 624 810 B1 and EP 1 408 850 B1; see EPO Register (here and here) and Swissreg (here and here) for further bibliographic information. Plaintiffs (Abbott et al.) asserted that defendants (Edwards et al.) are infringing the Swiss parts of EP’810 and EP’850 with their PASCAL Transcatheter Mitral Valve repair (TMVr) device.
See Edward’s PASCAL website for further information on this product.
For comparison, plaintiffs’ own product is MitraClip:
See Abbott’s MitraClip website for further information on this product.
The main hearing had taken place on 3 July 2019.
The decision holds that PASCAL infringes claim 1 of EP’850 (¶¶ 62-70), and that this claim is valid over the prior art referred to by defendants as a plea in defense, i.e. US 3,874,388 (E5), WO 96/32882 A1 (E6) and CN 1 142 351 A (E7); ¶¶ 48-61. Preliminary injunctive relief was thus granted, based on EP’850.
As to EP’810, the decision holds that claim 1 is not infringed; ¶¶ 31-34.
Not easily reparable harm
Defendants contested that MitraClip itself is covered by the patents in suit; plaintiffs disagreed. The decision holds that this is irrelevant in any event. The irreparable harm of plaintiffs 1 and 3 depends on whether their own product is competing, since experience has shown that this leads to a loss of turnover, the extent of which is difficult to prove. Mere reference to potential financial compensation does not eliminate the irreparable harm; ¶ 77.
Proportionality
Precautionary measures must be proportionate in the sense that the content of the ordered measure must be suitable to avert the asserted disadvantage and must not go further than is absolutely necessary to avert the disadvantage (‘proportionality in the narrower sense’). Whether the adoption of precautionary measures may also be made dependent on the fact that the precautionary measure applied for does not encroach disproportionately heavily on the legal sphere of the defendant (‘proportionality in the broader sense’) is controversial.
In the present case, the FPC could leave this issue undecided because the defendants did not claim that the precautionary measure applied for has a disproportionate impact on their legal sphere, but that it is in the public interest that the marketing of the PASCAL device in Switzerland should not be prohibited as a precautionary measure.
The decision holds that — while it is controversial whether the adoption of a precautionary measure can be refused if it disproportionately affects the interests of the defendant — it is clear that public interests are not to be taken into account when it comes to weighing of interests: The PatA provides for a system of compulsory licences which, in principle, closes the gap in order to protect public interests from being jeopardised by the enforcement of patents. In particular, Art. 40 PatA provides for a compulsory licence in the public interest. In passing, the decision notes that it has not yet been decided in Switzerland whether the claim to a compulsory license can also be invoked in summary proceedings. Note that this has been answered in the affirmative in Germany recently; BGH X ZB 2/17 — Raltegravir.
Anyway, defendants did not claim that they should be granted a compulsory license in order to protect public interests. In particular, defendants had not submitted a license offer to the patentee at reasonable market conditions which the patentee has not accepted within a reasonable period (cf. Art. 40 in conjunction with Art. 40e (1) PatA). Accordingly, the objection that the requested measures were disproportionate has been rejected.
These considerations in ¶¶ 80-82 are what the FPC referred to in the following Tweet:
Decision of 15 August 2019 in case of Evalve etc v. Edwards Lifesciences etc re
preliminary measures (partial grant): public interest in stay of injunction must be argued under compulsory license (art. 40 Patent Act), https://t.co/fFCySp4uTU pic.twitter.com/L8g0uMrWUx— SwissPatentCourt (@PatentCourt) September 2, 2019
An appeal is currently pending at the Supreme Court.
The appeal has been dismissed; the Supreme Court decision 4A_453/2019 has been published earlier today.
Reported by Martin WILMING
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BIBLIOGRAPHY
Case No. S2019_002 | Decision of 15 August 2019 | ‘PASCAL’
| (1) | Evalve, Inc. |
| (2) | Abbott Cardiovascular Systems, Inc. |
| (3) | Abbott Medical (Schweiz) AG |
| ./. | |
| (1) | Edwards Lifesciences AG |
| (2) | Edwards Lifesciences Technology Sàrl |
| (3) | Edwards Lifesciences IPRM AG |
| (4) | Mitral Valve Technologies Sàrl |
Panel of Judges:
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- Dr. Mark SCHWEIZER
- André ROLAND
- Dr. Michael STÖRZBACH
Judge-rapporteur:
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- André ROLAND
Court Clerk:
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- Agnieszka TABERSKA
Representative(s) of Plaintiff:
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- Dr. Thierry CALAME (Lenz & Staehelin)
- Peter LING (Lenz & Staehelin)
- Christoph MÜLLER (Hepp Wenger Ryffel), assisting in patent matters
Representative(s) of Defendant:
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- Dr. Andri HESS (Homburger)
- Julian SCHWALLER (Homburger)
- Bernhard THUM (Wuesthoff), assisting in patent matters
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DECISION IN FULL
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ANNOUNCEMENT OF THE HEARING
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EP 1 624 810 B1
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EP 1 408 850 B1
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