Laurastar and Innosteam Swiss working flat out

Case No. S2018_003 | Hearing of 28 June 2018

UPDATE 14 July 2018:

This post initially mentioned that the prohibition to dispose of the applications at stake has been lifted. We have learned meanwhile that this was unfortunately not correct. Rather, the register ban was maintained. The post has accordingly been corrected.

Laurastar logo

Laurastar and Innosteam are litigating about ownership of two PCT applications filed in the name of Innosteam; see the announcement of the hearing here. It is pretty clear that WO 2018/006994 A1 and WO 2018/036653 A1 are at stake; see the EPO Register here and here.

Innosteam logo

The patent applications are about devices and methods for producing instant steam (WO’994) and instant hot water (WO’653), for use e.g. in devices for ironing.

Plaintiff alleges that the two patent applications pertain to subject-matter that has been invented by two of its former employees that are now employed by the defendant. On the contrary, defendant argues that the claimed subject-matter had been invented when the inventors had no longer been employed by the plaintiff. In the hearing, the role of yet another former employee of Laurastar was briefly touched who apparently changed sides, too. He is not named as an inventor in the applications at stake, but from what the defendant has argued we understand that he apparently has referred his new employer to publicly available documents (inter alia patents / patent applications) of his former employer. Further clarification in this respect may well be subject of main proceedings which are pending.

On plaintiffs request, the President of the Court had ordered the defendant in a summary judgement of 20 April 2018 (unpublished) and without hearing the defendant beforehand not to dispose of the two patent applications while the main proceedings are pending.

The hearing was remarkable for some procedural reasons.

First, an exhaustive expert opinion of the judge-rapporteur in accordance with Art. 183(3) CPC has been given orally — for the first time ever, to the best of our knowledge. This expert opinion was not favorable for the plaintiff. The parties were then given the opportunity to comment on the expert opinion immediately thereafter.

Not yet done …

The parties were then asked for their interest in settlement discussions, but both parties denied.

Typically, this would have been it, and a decision on whether or not the interim measures are upheld would be issued in writing. Not so here. The President asked the second judge for his brief opinion, which was unfavorable for the plaintiff, too.

The prohibition for the defendant to dispose of the two patent applications while the main proceedings are pending has been upheld, for the time being.

Reported by Leila MÜLLER and Martin WILMING

BIBLIOGRAPHY

Case No. S2018_003 | Hearing of 28 June 2018

Laurastar SA
./.
Innosteam Swiss SA

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Ralph SCHLOSSER
  • Dr. Giovanni GERVASIO

Judge-rapporteur:

  • Dr. Giovanni GERVASIO

Court Clerk:

  • Agniezka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Jacy PILLONEL (BCP)

ANNOUNCEMENT

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WO 2018/006994 A1

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WO 2018/036653 A1

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Act quickly when it’s urgent

Case No. S2018_002 ¦ Decision of 5 April 2018 ¦ ‘Abweisung superprovisorische Massnahme; fehlende besondere Dringlichkeit’

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendant.

The plaintiffs requested ex parte interim injunctive relief, i.e. without hearing the defendant beforehand. In principle, this is possible in cases of special urgency; Art. 265 CPC. It goes without saying that a plaintiff should act quickly in a case of special urgency. But how quickly does one need to take action so that it is not considered (too) late? The present decision provides further guidance in this respect.

In cases of alleged urgency, the court examines whether the request has not obviously been delayed or could reasonably have been and should have been filed earlier. If this is the case, it is no longer justified to not hear the defendant beforehand. If a plaintiff waits considerably longer after a triggering event than the time limit that is typically set for the defendant to respond in summary proceedings, the case can hardly be assumed to be particularly urgent.

[B]eim Fall der zeitlichen Dringlichkeit ist weiter zu prüfen, ob das Gesuch nicht offensichtlich hinausgezögert worden ist respektive vernünftigerweise früher hätte gestellt werden können und müssen, mithin das Weglassen der Anhörung der Gegenseite nicht mehr gerechtfertigt ist. Die relevante Zeitskala bemisst sich dabei unter anderem an der Zeit, die typischerweise der Gegenseite zur Stellungnahme eingeräumt wird. Wartet die Gesuchstellerin ohne erkennbare Gründe mit der Einreichung des superprovisorischen Gesuchs nach einem auslösenden Ereignis deutlich länger zu, als der Gegenseite in einem Massnahmeverfahren zur Stellungnahme eingeräumt wird, kann schwerlich von besonderer Dringlichkeit im Sinne von Art. 265 ZPO ausgegangen werden, die ein Weglassen der Anhörung der Gegenseite rechtfertigt.

Plaintiffs argued that the defendant had already ample opportunity in prior / parallel proceedings to provide comments. Accordingly, new arguments were not to be reckoned with. The decision holds that this has nothing to do with the alleged urgency, and that there may well be new arguments since parallel proceedings are pending elsewhere.

Further, plaintiffs argued that the expected delay in co-pending nullity proceedings caused urgency of the present request for injunctive relief. However, the decision holds that the course of the parallel nullity proceedings is not out of the ordinary, and plaintiffs could have lodged a claim for infringement in main proceedings since more than a year ago – but did not do so.

time is running …

Note that the request for ex parte interim measures had been filed more than one month after the parties had been informed about availability of hearing dates in parallel nullity proceedings no earlier than end of August 2018, and the plaintiff indicated one of these dates as ‘suitable and preferred’ (‘geeignet und bevorzugt’). Only later, plaintiffs requested an earlier hearing date – which could not be arranged anymore.

Moreover, the present request was filed more than two months after receipt of the opinion of the judge-rapporteur. If this was considered as the triggering event (in view of a changed opinion of the judge-rapporteur), the request could and should have been filed much earlier.

Finally, plaintiffs noted that previous summary proceedings took about six months to conclude. A similar duration in the present proceedings would result in a decision only after the hearing date in parallel nullity proceedings. The decision holds that this, again, has nothing to do with the required urgency.

The request for ex parte interim injunctive relief was thus dismissed, and inter partes summary proceedings are now ongoing.

Reported by Martin WILMING


BIBLIOGRAPHY

Case No. S2018_002 ¦ Decision of 5 April 2018 ¦ ‘Abweisung superprovisorische Massnahme; fehlende besondere Dringlichkeit’

  1. A. AG
  2. B. AG

./.

C. AG

Judges:

  • Prof. Dr. Daniel KRAUS
  • Dr. Tobias BREMI
  • Prisca VON BALLMOOS

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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Ex parte interim injunctive relief granted based on an SPC

Case No. S2017_006 ¦ Decision of 30 August 2017 ¦ “Gutheissung superprovisorische Massnahme”

The defendant in this matter had notified the SPC holder of the imminent launch of its generic product in Switzerland, before a decision in parallel nullity proceedings was available. The validity of the SPC had been challenged in parallel nullity proceedings based on the SPC case law of the CJEU and an accordingly to be revised Swiss practice.

The plaintiff sought for interim injunctive relief without hearing the defendant beforehand. Since the critical issue had not yet been decided in parallel nullity proceedings, interim injunctive relief has provisionally been granted. The defendant has been invited to file a response.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_006 ¦ Decision of 30 August 2017 ¦ “Gutheissung superprovisorische Massnahme”

Judge(s):

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)

Representative(s) of Defendant:

DECISION IN FULL

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Register ban upheld, the crowd of defendants cleared

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A first decision in this matter was issued on 31 January 2017; see this Blog here for a review of the subject matter at stake. In brief, a register ban had been ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution of a patent application which is the subject of an ownership dispute.

UPDATE May 31, 2017:

The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.

A hearing had initially been scheduled for 29 March 2017, but it need not take place: Defendant (1) did not object to the ex parte interim measures. The register ban will thus be maintained pending main proceedings O2017_003.

Apparently, defendants (2) and (3) participated in financing defendant (1). Towards this end, defendant (1) had assigned the patent application to defendant (2) on 8 July 2016. Later, the transfer has been reversed again — by verbal agreement in first place, and on 20/22 February 2017 in writing. Note that the transfer of a patent application by legal act is valid only if evidenced in writing; see Art. 33(2bis) PatA. It is beyond dispute that the current holder of the patent application is defendant (1). The plaintiff only disagrees with the retroactive effect of the re-assignment. However, defendant (2) has no standing to be sued anymore. Defendant (3) has never been the holder of the patent application and has no standing to be sued, either. The FPC thus dismissed plaintiff’s requests targeted at defendants (2) and (3).

The value in dispute is another interesting aspect of this case. The initial assignment of the patent application had been linked with a payment of CHF 594’000,–. On request of the FPC, the plaintiff thus initially submitted that the value in dispute is CHF 600’000,–. Defendants (2) and (3) submitted that CHF 594’000,– must not be considered as the actual value of the patent application. Rather, the amount had been fixed at that time in order to consolidate the financial situation of defendant (1). The plaintiff thus requested that the value in dispute shall be fixed to only CHF 50’000,–. The FPC did not re-adjust the value in dispute but rather sticked to the facts of the agreement of 8 July 2016 which at the face of it is a value determined by independent parties in an arms-length transaction.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A SA

./.

(1) B SA
(2) C S.A.
(3) D S.A.

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Frank SCHNYDER
  • Dr. Tobias BREMI

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

Representative(s) of Defendants (2) and (3):

DECISION IN FULL

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Some recent case law revisited

VESPA’s annual evening conference earlier this week shed light on some key aspects of recent case law of the FPC.

Discussion centred on the following topics:

i)   Protective letters

Protective letters are frequently used. See the most important do’s and don’ts here. In addition, note that protective letters can be filed by a legal representative or the party itself, but not by a patent attorney.

The audience unanimously critcized decisions D2015_035 of 08 March 2016 (hn: A protective letter may not be withdrawn) and, to less extent, D2015_035 of 09 February 2016 (no later addendum to a protective letter, except for proper and improper novae).

By the way: A protective letter may not only be useful in anticipation of a request for ex parte interim injunctive relief, but also in anticipation of a request for preliminary measures to secure evidence like this one here.

ii)   Ex parte interim measures

Decisions S2016_007 (“don’t play games”) and S2017_001 were only briefly touched.

S2017_002 and S2017_003 made clear which requirements are to be fulfilled for an ex parte register ban to be successful; the former failed, the latter has been successful.

It became clear in the discussion that the surprising effect is not the only motivation for practitioners to request ex parte interim measures. Actually, ex parte interim measures are perceived by some as the only way to get speedy relief. Interim measures typically take seven to twelve months if they really dive deep into the subject-matter at stake (which is more the rule rather than the exception). Some participants questioned whether there is actually any difference to main proceedings, besides the fact that judicial vacations are not applicable. Sure, court fees are reduced — but so is the party compensation. On the other hand, parties typically do not perceive that the reasonable effort in summary proceedings is reduced by half.

iii)   Service of process

Two Swiss parts of European patents have been recently revoked by the FPC in judgements rendered in absentia; O2015_007 and O2015_017. The patentees / defendants did not respond at all. At least for O2015_007, it is clear meanwhile that this happened by accident; see the detailed discussion here. In both cases, the U.S. patentee / defendant had been directly served with the writ in accordance with the Hague Convention and Art. 137 CPC. In accordance with U.S. rules, the Swiss embassy in the U.S. thus served the writ to the patentees / defendants by registered letter. In the absence of any reaction, the FPC had published subsequent notifications to the patentees / defendants only in the Swiss Official Gazette of Commerce; Art. 141 CPC.

It has been proposed that the FPC could at least bring the subsequent publications in the Swiss Official Gazette of Commerce also to the attention of the representative on file at the Swiss Federal Institute of Intellectual Property for the patent in suit.

On a personal note: I have my doubts. (I have been involved in O2015_007, but this case is finally concluded now.) It may well appear formalistic to only publish a notification in the Swiss Official Gazette of Commerce when contact details of a representative of the patent are available from Swissreg. As a patent attorney on file in Swissreg, one may easily find it unsatisfactory to just be ignored. But it’s the law. Even if such an additional notification would not constitute a breach of judicial confidentiality: It surely is more than what is required by law. Nota bene: In inter-partes proceedings. Any assistance by a court for the potential benefit of one party is of potential disadvantage for the respective other party; and I cannot see any superordinated public interest, either. This is why I am hesitant. But may the lawyers have their say on this.

iv)   Doctrine of Equivalents

Discussion of decision 4A_131/2016 of the Supreme Court highlighted the apparent gap in the assessment of literal infringement and infringement under the DoE; see this Blog here. But let’s focus on the positive: The three-step questionnaire for the assessment of infringement under the DoE is approved. Let’s await the next decision(s) of the Supreme Court which hopefully provide further guidance.

As to the assessement of the third question in O2015_004, it has been discussed whether the actual wording of a claim is more binding if the alternatives are readily apparent — both for the person skilled in the art reading the patent, as well as for the patentee when drafting the application. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)

v)   Abandonment of subject-matter

A further interesting aspect of O2015_004 surely is the issue of abandonment of subject matter; see this Blog here for further details. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)

vi)   Miscellaneous

Discussion briefly touched decisions 4A_427/2016 of the Supreme Court with respect to the legal standard of implied confidentiality (see this Blog here) and S2016_002 with respect to the admitted prior art as supporting basis for claim construction (see this Blog here).

Reported by Martin WILMING

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No more ‘shell games’: Register ban imposed ex-parte in an ownership dispute

Case No. S2017_003 ¦ Decision of 31 January 2017 ¦ “Mesures superprovisionnelles; interdiction de transfer, suspension IPI”

The background of this case is a cooperation with an unhappy ending, at least concerning the resulting IP. The plaintiff (A) and one of the defendants (B) had signed a confidentiality agreement on 12 July 2015 for the purpose of a joint development. Two employees of A had then worked on this project and exchanged their respective results by Email. These results were then shared with B in working meetings later on, and a specific solution was sent to B by Email on 10 September 2015. B then filed a Swiss patent application on its own on 25 November 2015. That would be enough to blow most cooperations, but it even got worse: B informed A on 11 October 2016 that the patent application had been assigned to D. And on 29 November 2016, A was informed that the patent application had been assigned to C.

A was not amused and requested that a register ban be ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution; and that B, C and D be ordered to abstain from any actions towards this end. These requests were indeed granted inasmuch as the Swiss patent application is concerned. On the contrary, the request was held inadmissible with respect to related applications unspecifically referred to in the requests. Likewise, a request for a register ban at the EPO was held inadmissible; this has to be effected in accordance with Art. 61 and R. 14 EPC.

The decision (again) outlines the essential criteria to be dealt with in patent (application) ownership disputes:

  1. Who actually has invented the disputed technology?
  2. How has the plaintiff obtained the right to be granted a patent for this technology?
  3. How has the defendant / patent applicant been informed about this technology?
  4. How is the technology reflected in the patent application at stake?

The decision holds that these criteria have been met by prima facie evidence: The plaintiff (1.) had identified the inventors; (2.) how he obtained the right to be granted a patent (i.e. by virtue of Art. 332 CO as employer); (3.) how this information had been conveyed to B (see timeline above); and (4.) how this is reflected in the patent application under dispute: Apparently, Fig. 1 of the patent application reflects all the essential elements which also corresponds to the wording of claim 1.

The multiple assignments underlined the risk of a not easily reparable harm for the plaintiff. On the contrary, the defendants are not substantially harmed by the ex parte order. As to the urgency of the matter, the decision holds that the plaintiff had acted with sufficient diligence on 18 January 2017 after having been notified of the (second) assignment on 29 November 2016, i.e. seven weeks ago. Summary proceedings can still be concluded earlier than potential main proceedings which typically take one year.

On the other hand, the diligence required for the ex parte order is less clear to me. The FPC held in an earlier case that seven weeks (what a coincidence!) were too long for a plaintiff to wait — rather, one should act ‘within one or two weeks in any event’; see this Blog here. The devil may be in the (yet unknown) detail.

As to the technology concerned, the bone of contention is a latch for a watch band with a folding clasp which can carry a biometric insert.

[…] fermoir pour bracelet de montre comportant une boucle déployante permettant de loger un insert biometrique […]

The Swiss patent application at stake has been filed only less than 18 months ago (25 November 2015); it is not yet published. We will learn more on or shortly after 25 May 2017.

And the parties? According to publicly available information, there are not too many companies in Switzerland working on exactly this topic. Actually, I could only spot a single fit I feel confident enough to share: Biowatch SA. See their promotional video from 36s onwards (embedded from Youtube):

Biowatch’s Matthias Vanoni said in an interview with welt.de on 24 February 2016 that they were developing a new latch for a watch band with a special fitting for the biometric module together with a cooperation partner, i.e. Oréade SA:

https://www.welt.de/wissenschaft/article152603723/Das-Venenmuster-als-besserer-Fingerabdruck.html
Welt.de (24.02.2016)

The hearing scheduled for March 29, 2017 will provide further insight, and the Swiss patent application will be published end of May 2017. Stay tuned!

UPDATE March 6, 2017:

The hearing scheduled for March 29, 2017 has just been canceled.

UPDATE May 31, 2017:

The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.

UPDATE Oct 2, 2017:

The matter has apparently been settled by compromise; see Matthias Vanoni’s comment in the comments section below.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 31 January 2017 ¦ “Mesures superprovisionnelles; interdiction de transfer, suspension IPI”

n/a

./.

1. n/a
2. n/a
3. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Frank SCHNYDER
  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

DECISION IN FULL

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PATENT APPLICATION IN SUIT

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No ex parte ‘shot from the hip’ in an assignment action

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

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.

  1. that the employee of the plaintiff has contributed to or made this invention (what exactly, when, where and how);
  2. how the defendant has been made aware of this invention (or parts thereof); and
  3. 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:

As to the first patent family, “WO 222” likely is WO 2011/042058 A1 and the European patent “EP 333” with 37 claims likely is EP 2 485 864 B1 (opposed by Trumpf Werkzeugmaschinen GmbH + Co. KG); see EPO Register and Swissreg for further details.

The second patent family is based on “WO 555” — which likely is WO 2012/136262 A1. This family has granted patents in Japan (JP 5828953 B2), Russia (RU 2 594 921 C2) and the U.S. (US 9,469,338 B2); examination of EP 2 694 241 A1 is still pending; see EPO Register.

The sole inventor of both patent families is Magnus Norberg Ohlsson, CEO of Tomologic AB, a company domiciled in Sweden.

Bystronic Laser AG likely is the counterparty. It had introduced a new online service ByOptimizer in November 2014, explicitly referring to a

[…] newly developed cluster technology from the Swedish company Tomologic. The patented technology […].

The former product page is currently offline (checked on Feb 2, 2017).

It’s only an educated guess — but wouldn’t it be an incredible coincidence if the rivals were not Bystronic Laser AG and Tomologic AB? Let’s wait and see …

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

n/a ./. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Simon HOLZER (MLL)
  • Esther BAUMGARTNER (MLL)
  • Martin TOLETI (Blum), assisting in patent matters

DECISION IN FULL

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More haste, less speed

Case No. S2017_001 ¦ Order of 16 January 2017¦ “Abweisung superprovisorische Massnahme”

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendant.

The patentee / plaintiff requested interim injunctive relief to be ordered without hearing the defendant beforehand, in view of special urgency. The FPC did not do so. In principle, the President could decide in the capacity of a judge sitting alone in summary proceedings (Art. 23(1) lit. b PatCA). But the present matter requires the assessment of patentability of the patent in suit; both parties are engaged in co-pending nullity proceedings at the FPC. In such cases, i.e. where the understanding of a technical matter is of particular significance, decisions must be made in a panel of three; see Art. 23(3) PatCA. It takes some time to staff the panel of judges from the pool of non-permanent judges who have to do a thorough check for conflicts. It would be unbalanced to not hear the defendant meanwhile since this will not delay the decision as such. The defendant has thus been ordered to file a response within only seven days. This short time was held appropriate since both parties are well acquainted with the subject-matter at stake from the co-pending nullity proceedings.

On the procedural side, there are two further aspects to note. First, the plaintiff had drafted its submission in English language, with reference to an agreement between the parties in this respect in co-pending nullity proceedings. The President held that this does not necessarily imply consent to the use of English language in the present proceedings — but provisionally and in the absence of an immediate information of the defendant to the contrary, consent will be assumed. Second, the President notes that a hearing on short notice might be necessary. A date will be fixed by way of precaution, as soon as the panel of judges is staffed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_001 ¦ Order of 16 January 2017¦ “Abweisung superprovisorische Massnahme”

n/a ./. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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Gilead ./. AbbVie: Court ban partially lifted

Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

This is further to an earlier post in this matter.

Gilead's Harvoni
Gilead’s Harvoni

In brief, both the plaintiff Gilead Pharmasset LLC and the defendant AbbVie Inc. had filed patent applications on a combination of sofosbuvir and ledipasvir (marketed by Gilead under the tradename Harvoni), and Gilead had lodged an assignment action against AbbVie in main proceedings (O2014_013).  A block of the patent register had been ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.

In the meantime, the defendant was belatedly heard and the FPC now finally decided on the requested interim measures (Art. 265(2) CPC). And: The interim measures were upheld to a large extent, but examination and grant proceedings may now continue. Still, it will be highly interesting to see how the case will be decided on the merits in co-pending main proceedings.

However, also the present decision has some interesting procedural implications:

i)  SUBSTANTIATION BY REFERENCE TO WRIT

The plaintiff had filed the assignment action in main proceedings on the very same day as the request for interim measures. In order to avoid unnecessary repetition in the substantiation of the request for interim measures, the respective parts of the writ were incorporated by reference. The defendant argued that this was inadmissible. And indeed, the FPC held that global references to other documents are regularly not sufficient. But in the present matter, it was. The underlying facts in both proceedings are the same and the plaintiff’s allegations are thus evident. Under these circumstances, it would be an excessive formalism to insist on a complete repetition in summary proceedings.

ii)  UNCONDITIONAL RIGHT TO REPLY IN SUMMARY PROCEEDINGS

The defendant had filed his reply to the request for interim measures on December 22, 2014. The FPC then informed the parties that an exchange of further written submissions is dispensed with. In addition, the plaintiff was informed that any remarks on the defendant’s reply would have to be submitted in due course, and the FPC further held that remarks filed by no later than January 19, 2015 would be considered timely filed. Apparently, the plaintiff then filed very extensive remarks, along with two folders of exhibits. The defendant refrained from making any further remarks on the merits, but essentially argued that the new allegations were to be ignored by the court.

The FPC held that the plaintiff’s submission of January 2015 is to be considered as a submission made under the condition of the unconditional right to reply. With reference to the decision 4A_815/2014 (r. 3.2) of the Supreme Court, the FPC clarified that this decision has not ruled out submissions under the unconditional right to reply in summary proceedings, but rather only relativised its scope. Anyhow, the plaintiff’s submission was only considered inasmuch as it was occasioned by the defendant’s reply (analogous to BGE 4A_487/2014, r. 1.2.4).

iii)  BELATED SUBSTANTIATION OF A NOT EASILY REPARABLE HARM

Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). The plaintiff had argued in the initial request that three potential actions of the defendant could cause an irreparable harm, i.e. (1) an assignment of the patent applications to a third party; (2) the granting of rights (licences or pledge); and (3) changes to the contents of the applications (Art. 51 and 64 PatR).

However, the plaintiff was silent on a not easily reparable harm that could come along with a continuation of the examination and grant procedure as such. The FPC took note that the plaintiff presented arguments in this respect for the first time only in the submission of January 19, 2015. But the FPC held that this was belated and did not consider those arguments any further.

In sum, the FPC thus partially lifted the ban on AbbVie’s patent applications, and the examination and grant proceedings of CH 707 029 and CH 707 030 may now continue. As to the remaining potential actions (1)-(3) outlined above, the defendant basically accepted the request for interim measures: The defendant confirmed to the court that he did not even think of any of these actions. Thus, the FPC upheld the interim measures to that extent.

iv)  AMOUNT IN DISPUTE

The court fee depends on the amount in dispute. Contrary to Art. 221(1) lit. c / Art. 219 CPC the plaintiff did not indicate the amount in dispute for the summary proceedings. In main proceedings, the plaintiff estimated the amount in dispute to “exceeding CHF 1m”. The defendant estimated the amount in dispute (for the main proceedings) to “exceeding CHF 10m”. All this did not help much to figure out the actual amount in dispute in summary proceedings. However, the defendant had requested a security of CHF 5m in case the ban with respect to the examination and grant proceedings would have been upheld. The FPC took this as a sufficient indication of the amount in dispute and thus fixed it to CHF 5m (BGE 92 II 62, r. 3). This results in a court fee of CHF 30’000,– (which is moderate in view of the value in dispute; see CostR-PatC), provisionally borne by the plaintiff (still subject to the outcome in main proceedings).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

Gilead Pharmasset LLC ./. AbbVie Inc.

Subject(s):

  • Interim measures without hearing the defendant
  • Interim measures
  • Transfer of patent application

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:

— FULL TEXT OF THE DECISION —

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