Stromer ./. Opium showdown at EuroBike: Meanwhile, in Switzerland …

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Case No. UPC_CFI_177/2023 | ‘ex parte PI / Opium’

WHAT YOU NEED TO KNOW

Stromer has effectively shut down Revolt Zycling’s booth with their Opium e-bikes at the EuroBike on 23 June 2023. They enforced the very first ex parte PI issued by the UPC.

Stromer had conducted a saisie helvétique at the premises of Revolt Zycling beforehand.

Stromer’s request for an ex parte PI in Switzerland has been dismissed. Inter partes proceedings in Switzerland still pending.

Stromer logo

Stromer is one of the most renowned e-bike brands; their claim is to write e-bike history. They recently locked jaws with a Swiss competitor, i.e., Revolt Zycling. The latter’s premium e-bike brand is Opium. Both are pretty cool, aren’t they?

Opium logo

The bone of contention is the dropout of the Opium bikes. myStromer (the company behind the Stromer brand) is co-owner of EP 2 546 134, together with the Taiwanese company Fairly Bike Manufacturing. I understand that Fairly supplies the frames and other components for the Opium e-bikes. The juicy thing is that Stromer had also relied on Fairly frames, at least in the past.

Eurobike logo

As reported e.g. in Velojournal, there was a showdown at the EuroBike in Frankfurt when Stromer effectively shut down the Opium booth on the third day of the fair. myStromer had secured the very first ex parte PI issued by the Unified Patent Court. They filed their request with the Local Chamber Düsseldorf on 22 June 2023, and the court issued the ex parte PI on the same day. Notably, Revolt Zycling had submitted a protective brief to the court well in advance, on 19 June 2023. To no avail: The UPC held that validity and infringement of EP 134 was sufficiently credible.

That’s the very public part of the story: A desertic booth on the final weekend of the EuroBike fair and the published order of the UPC. But the Swiss FPC has been pretty busy, too. Nothing has been officially published yet, but from the ex parte PI of the UPC it is clear that a saisie helvétique was conducted on 19 June 2023 at the premises of Revolt Zycling in Switzerland:

Note that it was exactly on that day when Revolt Zycling had submitted its protective brief to the UPC. Clearly, something was brewing. Velojournal reported on 11 July 2023, with reference to the CEO of Revolt Zycling, that myStromer had also sought an ex parte PI in Switzerland in the aftermath of the saisie, but the FPC dismissed this request:

No ex parte PI in Switzerland

It’s not much out of the ordinary that no ex party PI was issued under the circumstances. An ex parte PI is a rare animal in Switzerland anyway, for procedural reasons. I understand from this piece in Velojournal that inter partes summary proceedings are now ongoing at the FPC. Further, the dropout of the Opium bikes has meanwhile been redesigned, to be on the safe side (without any admittance of a legal obligation to do so, in my understanding).

Now, what’s it all about

Let’s have a closer look at the patent at stake. Here’s claim 1 of EP 134:

I understand from the order of 22 June 2023 that the critical bit in terms of (non-)infringement is this:

[…], while the second fork (12) is recessed with an internal thread hole (121) corresponding axially to the through hole [(110)], […]

Revolt had argued in their protective brief that this feature was not fulfilled by their design of the dropouts. I have included Fig. 2 and 3 of EP 134 below. The second fork (12) is on the right side of Fig. 3:

Here’s a colored visualization of a subsection of Fig. 3 that shows the recessed second fork (12):

I have colored the internal thread hole (121) in green; the part where I believe that it can be best seen how the second fork is recessed is marked in blueish. The external thread (320) of the axle is marked in orange.

Now, here’s what the ex parte PI says about infringement. It’s just one paragraph:

The PI holds that it does not matter whether the internal thread is directly in a hole of the fork or in a sensor (presumably a torque sensor) attached on the fork. The patent would not exclude a fork being made of multiple components.

That’s a pretty quick conclusion, isn’t it? I feel that Revolt Zycling had disputed in their protective brief that their fork (12) is recessed with an internal thread hole; see the citation from the protective brief above. It is not fully clear to me how this is dealt with in the analysis of infringement. But, maybe, the order is just too simplified for a non-party to fully grasp the details.

Anyway. Here’s how the Opium dropouts look like:

The relevant fork is the right one. It will be interesting to learn more about the actual design of the inner thread hole in that fork (or in a sensor that the court considered to be a part of the fork), and how the fork (or the sensor part of it) is recessed. We shall see when the FPC publishes its decision(s).

The ex parte PI further notes that that there is a license agreement in place between Revolt Zycling and Fairly. However, the judgment holds that this license agreement does not extend to the specific assemblies of EP 134 (and notes in passing that the Swiss FPC had held the same in an order of 8 June 2023; unpublished), i.e. no exhaustion occured:

What about Austria?

It appears that myStromer had forgotten to include Austria in the list of countries in their auxiliary request for injunctive relief that had been allowed. They attempted to have this corrected later and argued that this was an error in the decision (which it was not); to no avail. See the court order of 30 June 2023.

final thoughts

Since this is the very first ex parte PI issued by the UPC, it triggered some thoughts with me: How does this compare to Switzerland?

Speed

The ex parte PI was issued lightning-fast, on the day of receipt of myStromer’s request. That’s truly amazing! In particular for a panel of three judges actually taking a decision on the technical merits — and in a distributed set-up like the UPC. Chapeau!

Content

Now that I have cheered the speed: Is it at the expense of thoroughness?

I don’t know yet, to be honest.

At the face of it, the ex parte PI is very well structured (thanks to templates), which is greatly appreciated. There are some glitches, e.g., concerning the name of the co-applicant of the patent in suit, etc. However these kind of things can easily be overlooked as blemish.

But the actual assessment of infringement is very short. Too short, in my opinion. It is merely stated that the patent does not exclude a multi-part construction of the second fork; see above. But … why is that? What made the judges believe that this understanding of a fork is the correct one? Frankly, I am missing the claim construction. Apparently, Revolt Zycling had a different understanding. I have no reason to assume that the outcome is wrong. I just don’t know. Let’s assume it’s right. I fully appreciate that it’s hard to come up with a well-reasoned infringement analysis on this short notice, in writing. But it would have been great to understand from a self-contained court order why Revolt Zycling’s claim construction was effectively dismissed.

Note that the Swiss FPC may issue ex party PIs without the need to provide rushed / half-baked reasons right away. Reasons can be given within 10 days thereafter, if a party requests so; Art. 239 CPC. I like that. I am not sure whether this is possible at the UPC(?).

Composition of panels

Here’s the panel of judges that issued the ex parte PI:

At first glance, I was missing a technically qualified judge. I understand that judges RICHTER and KLEPSCH are legally qualified. Judge KUPECZ had initially been appointed as technically qualified judge, but he has meanwhile been appointed as legally qualified judge. Judge KUPECZ has a background in biotechnology (see here). Which is not really what this case is all about. Don’t get me wrong: Chemists / biotechnologists are great people; they can do everything. (Guess my technical background! 😎)

I understand that the composition of the panel with three legally qualified judges is in full accordance with Art. 8 UPCA. But, I wonder:  When there are about two dozens of technically qualified judges with a background in mechanical engineering or physics available, wouldn’t it make sense to have at least one of them on the bench for a decision on the technical merits of an ex parte PI? I find it a bit strange that the undoubtedly available technical competence of the TQJs is not relied on in such cases.

UPDATE 12 August 2023: In the first version of this post, I had guessed that judge KUPECZ was erroneously referred to as legally qualified judge. A kind reader notified me that I was wrong, and I have corrected this. Btw, is there an official up-to-date list of all UPC judges? I can’t find one.
Costs

The PI has been issued with immediate enforceability subject to a deposit of EUR 500’000,– to be provided within 10 days:

That’s … not cheap. Note that Revolt Zycling had requested that a deposit shall be required, but they had not specified the amount. The court came up with 500k. I have a vague feeling that PIs at the UPC will be used only by the big guys with the deep pockets. myStromer provided the deposit in due time.

The Swiss FPC has a much less restrictive approach; see the judgment S2021_005 of 15 December 2021 (¶¶68-69). In that case, Novartis secured a PI against Mepha, kicking a deferasirox generic out of the market. Mepha had requested that the PI was issued only subject to a deposit of 500k, but the FPC did not follow that request. The FPC ruled out that Novartis would not be in a position to pay damages to Mepha in case the PI turned out later as unfounded (which it did, btw) — and calculation of the damages is notorious difficult anyway, with or without a deposit. My best guess is that myStromer would not have been considered cash-strapped, either.

Anonymization

I trust this is GDPR at its best: The ex parte PI spells out the names of the parties and the law firms of their representatives, but the names of the individual lawyers / patent attorneys are omitted.

I am tempted to write inappropriate things …

✍ MW

BIBLIOGRAPHY

Case No. UPC_CFI_177/2023 | ‘ex parte PI / Opium’

myStromer AG
./.
Revolt Zycling AG

Panel of Judges: [or: Single Judge:]

    • Ronny THOMAS
    • Sabine KLEPSCH
    • András KUPECZ
  • Representative(s) of Plaintiff:

Representative(s) of Defendant:

UPC PUBLICATIONS

Ex parte PI of 22 June 2023:

Order of 30 June 2023 re correction / AT:

Order of 3 July 2023 re deposit:

PATENT IN SUIT

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Ex parte interim injunctive relief granted and confirmed after hearing the Defendant

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Case No. S2021_003 | Decision of 15 September 2021 | ‘Baugerüst’

DISCLOSURE NOTICE
Hepp Wenger Ryffel is involved in this matter on behalf of the Plaintiff / Tobler AG.

The patent at stake is EP 2 881 521 B1; cf. EPO Register and Swissreg for further bibliographic information. Tobler AG had requested interim injunctive relief for Vijator Schweiz GmbH‘s scaffolds of the “WAS-M” type with a diagonal strut of rectangular, oval or pentagonal shape (cf. claim 1 of EP 521):

Notably, Vijator Schweiz had admitted that EP 521 was valid and infringed by its WAS-M scaffolds; cf. ¶16.  Nevertheless, Vijator Schweiz had indicated to Tobler after having been served with the request for interim injuntive relief that it would export the remaining WAS-M scaffold as soon as possible. This gave rise to ex parte interim injunctive relief by order of 16 June 2021, prohibiting such export. Further, Vijator Schweiz did not submit an unconditional cease and desist declaration, but rather only declared that it would do so in case the FPC would order interim injunctive relief. The threat of (further) infringing acts and of not easily reparable harm was thus established; cf. ¶17, 20.

Tobler logo

Urgency was given, too: Tobler had undisputedly become aware of the infringing acts only in April 2021, i.e. the request for interim injunctive relief was filed soon thereafter (25 May 2021) and well before the 14 months bar for ‘relative urgency’; ¶21.

Commensurability of interim injunctive relief was a non-issue since Vijator had declared that it would provide a cease and desist declaration when the FPC would order interim injunctive relief; cf. ¶24.

The parties were far apart with their respective estimates of the value in dispute: Tobler assumed CHF 100’000,–, while Vijator Schweiz submitted that it had only made a profit of CHF 1’000,– with the infringing scaffolds. The judgment holds that in case of such discrepancy the higher value is typically to be taken — and it is Plaintiff’s commercial interest which is relevant for the value in dispute, not Defendant’s profits; ¶30.

In a nutshell, interim injunctive relief was ordered as requested, including a prohibition to export.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2021_003 | Decision of 15 September 2021 | ‘Baugerüst’

Tobler AG
./.
Vijator Schweiz GmbH

Single Judge (President):

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • n/a
    • n/a, assisting in patent matters

DECISION IN FULL

EX PARTE INTERIM INJUNCTION

PATENT IN SUIT

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Conference of 3 December 2019 on case management issues in IP proceedings

I had the pleasure to attend the conference on Case Management Issues in IP Proceedings earlier this week in St. Gallen, jointly organized by INGRES and SVRH. Expectedly, the discussion between judges, legal practitioners and patent attorneys was vibrant and open-minded. I gained a lot of full and frank insight into how cases are handled before the various commercial courts in Switzerland; these aspects of the conference will surely be dealt with in a summary to be made available here.

My personal take-away messages concerning proceedings before the FPC are the following:

No split reply anymore …

In the normal course of infringement proceedings, the FPC had ordered a partial reply from the plaintiff that only dealt with the nullity arguments brought forward by the defendant in his answer to the complaint, as a plea in defense. The FPC’s intention was to have a single statement of both parties on the two key aspects of the case, i.e. infringement and validity, before the parties were summoned for the instruction hearing. In the informal part of the instruction hearing, the court delegation could thus indicate a preliminary opinion on both key aspects, in view of the first exchange of arguments. Things may well have changed in view of the second exchange of briefs. But still, the interim assessment of the matter in the instruction hearing had been based on a well-balanced exchange of arguments: The first round had been completed. The exchange of briefs had been as follows:

Old practice w split reply

In view of the obiter dictum in the Supreme Court’s recent decision 4A_70/2019 (discussed on this Blog here), the FPC has meanwhile discontinued the practice to split the reply in infrigement proceedings. Thus, the regular exchange of briefs in infringement cases will be as follows:

New practice w/o split reply

The reply will not be split anymore. The plaintiff will be invited to file his reply only after the instruction hearing. That’s a pretty standard exchange of briefs now, as it is known in any kind of proceedings governed by the CPC.

… and how that might influence the procedural strategy of the parties

Clearly, the assessment of validity of the patent in suit by the court delegation during the instruction hearing will be even more preliminary than ever before. The plaintiff will likely not have anticipated and addressed all the nullity arguments in the complaint. Thus, there will likely be nullity arguments on file on which the plaintiff / patentee has not yet been heard, and the court delegation cannot easily give an opinion on such arguments (except, maybe, for some formal / purely legal issues). Time will tell whether the instruction hearing will henceforth be of that much value to foster a settlement as it had been in the past; see the settlement rates over the years on this Blog here.

Some food for further thought, based on what has been discussed at the conference:

    • Will we see more infringement complaints with a full and frank discussion of potential nullity arguments, based on what has been argued in proceedings elsewhere, or in prior communication between the parties? That is pretty likely, indeed. It became clear in the discussion that such extensive frontloading has already happened.
    • A defendant in an infringement case has any motiviation to get invalidity reasonably addressed by the court delegation in the instruction hearing. But that will not happen to large extent when the plaintiff had just been silent on validity in his complaint. Still, the defendant might cure this ‘defect’ himself: He could gather what had been argued elsewhere by the patentee / plaintiff in defense of his patent or during prosecution, and disprove those arguments.  The plaintiff would be hard pressed to contradict his own arguments that had been made elsewhere — and the court delegation could well indicate an opinion on such arguments in the instruction hearing, in my opinion.
    • Will patents more often be asserted only to a limited extent in the future, i.e. limited enough to render the (expected) plea for nullity in defense moot, yet broad enough to cover the allegedly infringing embodiment? In my perception, that would not be a sign of weakness at all. It is just pragmatic to assert the patent only to the extent necessary.
    • Yet another strategy of patentees might be to frontload various limited versions of the patent for assertion inter partes (verbal limitations) as auxiliary requests already with the complaint, to get a broad(er) picture of potential allowability in the instruction hearing.
    • Finally, patentees might also consider to assert the patent as granted, but to set out in the reasons that a whole lot of further features of the patent, from dependent claims or even from the specification, are fulfilled in the allegedly infringing embodiment. That leaves much leeway for various verbal limitations at a later stage of the proceedings.

Plan B?

Now, what if the instruction hearing turns out to be not of much value under the new regime anymore? Dieter BRÄNDLE mentioned that the Commercial Court Zurich had invited the parties to submit a brief statement only for consideration in the instruction hearing. If no settlement was reached and the parties wanted to rely on anything from their statements, they had to refile those arguments with their outstanding briefs.

Could that maybe a worthwile approach to bring the patentee’s complete view on defendant’s plea for nullity to the court delegation’s attention before the instruction hearing? Initial reactions were split: Would such a statement maybe considered as a reply in disguise? That could have fatal consequences with respect to an early closure of the file. However, I have also heard prominent voices in favor of this approach. Mark SCHWEIZER indicated that nothing like this would now be introduced in a rush now. Let’s see how the new regime works in practice. If it doesn’t, one might well consider this in more detail.

On a sidenote, I have recently been involved in a settlement conference in U.S. proceedings. The judge did a great job, even though no settlement could be reached in the end. The judge issued a very specific order beforehand about a confidential memorandum to be filed by both parties; see the Order for Settlement Conference. Along with a strict word count limit, I feel this is indeed very helpful for a judge to better understand where both parties are coming from. I am not overly enthusiastic about litigation in the U.S. at all, but this could be sth worth to consider.

Settlement talks in general

Should court-mediated settlement talks be held only with the two parties together? What about shuttle diplomacy, i.e. the judge(s) also talking with each party individually, e.g. to overcome certain personal tensions or hostile feelings between the parties and/or their representatives. Shuttle diplomacy (referred to as ‘Einzelabreibung’ or ‘Einzelabschlachtung’ by some participants) is practised at least by some Swiss courts; see Mark SCHWEIZER’s recent comparative study.

One potential downside is, of course, that a party may easily feel uncomfortable with the fact that some unilateral conversation is going on behind the scene between the judge(s) and the counterparty.

Mark SCHWEIZER had been asked whether shuttle diplomacy is done at the FPC. The answer was a clear ‘No’, and it became pretty clear that this was not an option for him at all.

Further news from the FPC

What¨s up?

The FPC has recently issued ex parte interim measures without any written statement of the grounds, in accordance with Art 239(1) lit. a CPC. A written statement of the grounds must be provided if one of the parties so requests within 10 days of the notice being given of the decision; else, the parties are deemed to have waived their right to challenge the decision (Art 239(2) CPC). Since ex parte interim measures cannot be appealed in any event (see e.g. decision 134 III 417 of the Supreme Court), ex parte interim measures need arguably not come along with a written statement of the grounds in any event. It would have been interesting to learn more about the particular urgency of this matter that urged the FPC to explore this possibility. However, nothing will be published: The parties have settled. Darn!

As mentioned on this Blog here, a timeline for the further course of the proceedings is established during the instruction hearing if no settlement is reached. It became clear that not everybody at the FPC believes that this is feasible, but Mark SCHWEIZER said that he is a die-hard optimist.

Claim construction is key in almost every case — and it might perhaps play an even more important role in the instruction hearing than ever before. However, Mark SCHWEIZER indicated that claim construction is still frequently treated like a red-headed stepchild in the briefs, and that it is hard for the court to only catch a glimpse of a party’s understanding of a certain feature from e.g. the discussion of the cited prior art.

Mark SCHWEIZER mentioned on a sidenote that he would tend to always allow joint procedural requests of both parties, as long as they do not contravene the law. Let’s see how parties make use of this flexibility.

The unconditional right to be heard sometimes leads to an essentially meaningless exchange of party submissions after formal closure of the file. Both sides feel prompted to reply just in order to formally contest the other party’s allegations. The question came up whether a court could forward such statements with the comment that the submission is deemed to be contested in any event. Mark SCHWEIZER indicated that the FPC would look into this, in particular whether this would be compliant with the CPC.

Gossip

Based on what had been mentioned at the conference I have to believe that the recent dissenting opinion had been supported by two judges; the actual split of the panel was thus 3:2. That’s a close call, indeed! See this Blog here for further information.

Reported by Martin WILMING

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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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