Enforcement of an injunction: The risk of hyperlinks

Reading time: 6 minutes

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

C&E Fein and Bosch have been litigating with Coram for quite a while, first in summary proceedings (no PI was imposed on Coram; see this Blog here) and subsequently in main proceedings (see this Blog here). The judgment in main proceedings held that EP 362 (see the EPO Register and Swissreg for further information; verbally substantially limited inter partes) was valid and infringed by Coram’s tools with connectors referred to as ‘Quick-Fit’ or ‘Q-Fit’.

Coram appealed, but the Supreme Court dismissed the appeal with judgment of 11 February 2022 (published only yesterday, 6 April 2022). Note that the appeal had no suspensive effect.

While the appeal was still pending, the parties locked jaws again. C&E and Bosch asserted that Coram did not comply with the court order.

Here is what happened:

The FPC handed down its judgment in main proceedings on 1 September 2021. The operative part of the judgment inter alia prohibits Coram to contribute to the offering of the saw blades with infringing ‘Quick-Fit’ connectors:

I take from the judgment that Coram immediately complied with the operative part of the judgment in most parts. Coram does not sell directly to end users, but only to a single distributor, Revotool. Coram immediately stopped its sales to Revotool, recalled infringing items from Revotool and urged Revotool to recall items from downstream distributors.

However, Coram’s website apparently remained unchanged until about 19 October 2022; the landing page still showcased tools with Q-Fit connectors e.g. on 16 September 2021. The tricky thing is that there is a hyperlink («Wo kaufen? […] Händlernetzwerk») at the bottom of the page, that provides a list of all points of sales in Switzerland where Coram products (not all of which are covered by the judgment) can be purchased by end users. The judgment holds that this is covered by the prohibition of contributing to offers. The legal term «Mitwirken» is broad, but clear:

Even though no actual sale of infringing goods has occured, the judgment holds that Coram had an increased duty of care in view of the judgment, and that a hyperlink to webpages where infringing goods are still offered (even though they have apparently not been sold anymore via these webpages!) is not excusable under the circumstances.

After a warning letter, Coram put a disclaimer on its website on or after 19 October 2021 (see e.g. here, 30 November 2021):

Das Angebot der Quick-Blätter gilt nicht für die Schweiz. Es werden keine Sägeblätter mit der Quickaufnahme in die Schweiz verkauft.

The judgment holds that this did not resolve the issue, but rather amounts to a somewhat contradictory behavior. The disclaimer indicated non-availability in Switzerland, but some points of sale that were hyperlinked by Coram still offered infringing tools.

Calculation of the administrative fine
you’ve been bad!

The initial threat was an administrative fine of CHF 1’000,– per day. The judgment acknowledges that Coram did not entirely ignore the operative part of the judgment and holds that the violation was only minor («minderschwer»). Further, Coram did not act wilfully, but only negligently. With the disclaimer in place after 19 October 2021, the violation is held to be even less severe. Accordingly, the daily fine was set to CHF 300,– for each day of violation until 19 October 2021, and CHF 100,– for each day thereafter.

Even though the max. fine was reduced by 70% and 90%, respectively, the overall fine still amounts to CHF 16’800,–. The overall bill for Coram is CHF 25’800,–, including a court fee of CHF 4’000,– and a partial refund of plaintiffs’ expenses for legal representation of CHF 5’000,–. That’s quite some money for a negligent hyperlink to some point of sales websites that still showed infringing offers which did not result in a single sale.

Coram’s second generation ‘Quick-Fit’

Here is an example of Coram’s tools with the first generation ‘Quick-Fit’ or ‘Q-Fit’ connectors :

You will readily appreciate the hexagon shape of the connector. Accordingly, there are six driving area regions in the first generation ‘Q-Fit’ connectors — an even number between 4 and 32 in accordance with the verbally limited claim.

Apparently, this fits well into the dodecagon shape of Starlock® fittings of Bosch and C&E Fein:

Starlock® fitting and tool  with dodecagon shape
‘Q-Fit’ (gen. 2)

Interestingly, a heptagon shape apparently is also compatible with the Starlock fitting. Coram’s second generation ‘Q-Fit’ (see e.g. the header image) that has been introduced into the market apparently in due consideration of the injunction has no even number of driving area regions anymore.

A smart move, this quick fix second gen “Q-Fit”, isn’t it?

/MW

BIBLIOGRAPHY

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Daniel M. ALDER
    • Dr. Markus A. MÜLLER

Judge-rapporteur:

    • Dr. Daniel M. ALDER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUMMARY JUDGMENT / ENFORCEMENT

JUDGMENT ON THE MERITS

PATENT IN SUIT

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Re-shuffling of claims: Scramble gamble

Reading time: 8 minutes

Case No. O2019_012 | Decision of 30 August 2021 | ‘Sägeblätter’

HEADNOTE

Art. 58(1) CPC, Art. 28a PatA; Principle of non ultra petita; limitation of patent claims.

The limitation of patent claims declared for the proceedings («verbal» or «inter partes») has retroactive effect to the date of grant of the patent («ex tunc»).

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

For some background information about the subject-matter at stake, please have a look at the comments concerning earlier summary proceedings between the same parties on this Blog here.

The patent in suit
Bosch’s logo

In brief, the invention is about a tool for use with a hand guided machine with an oscillating drive. The attachment device for the tool is a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools
The alleged infringement
Coram’s logo

The plaintiffs asserted that EP 362 (more precisely, verbally limited by a combination of claim 1 with dependent claims 13, 8, 3, 7 and 4, further limited by some  prefererred features in these claims) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’:

Grab and rotate the tool, to get an idea of
the 3D-fitting


In prior summary proceedings, interim injunctive relief had been denied for lack of novelty over EP 596 831 A1. At that time, the patent in suit had not yet been verbally limited as in the present proceedings; see this Blog here. But now, the judgment holds that the verbally (very) limited claim is valid and infringed.

The most interesting aspects of the judgment, in my view, are the following:

An unintentional mishap: Correction allowed

Plaintiffs had limited EP 362 inter partes with the reply, inter alia by combining claim 1 with features of claim 13. The relevant feature of claim 13 reads as follows (emphasis added):

[…] the attachment device (12) comprises an even number of driving area regions (2, 2a, 2b), preferably 4 or more, preferably 8 or more, and particularly preferably 16 or more, and further preferably 64 or less, preferably 48 or less, and particularly preferably 32 or less, most preferably 24,

Based thereon, the verbally limited claim demanded for «4 or more and 32 or less» driving area regions. Which is okay. But the mandatory feature of an «even number» got lost. The judgment holds that an interpretation of Plaintiffs’ submission in good faith must lead to the conclusion that the «even number» was not meant to be deleted. In particular, Plaintiffs had submitted in the reply that they limited the claim by defining the exact numbers instead of «only» the even number:

Accordingly, Plaintiffs’ correction to re-include the «even number» even after closure of the file was admitted.

What is a ‘Rounding’?

The claim as asserted demands for ’roundings’ (Abrundungen) between the driving area regions. Apparently, the parties dissented about whether or not that implied a certain threshold of the radius. Accordingly, the FPC had to construe the term. Towards this end, the judgment first points to the common use of the term in material processing, i.e. to chamfer an edge (eine Kante brechen), with reference to Wiktionary (fn 19 in ¶ 19). However, this does not say anything about the extent of chamfering. And the patent itself? It is silent about the effect of the roundings, which is why the judgment holds that a functional interpretation does not help either. Since the patent does not give any further indication about the extent of the rounding, the judgment holds that the term is essentially non-limiting, both in terms of validity and infringement:

Accordingly, the judgment holds that ’roundings’ has to be interpreted broadly: Depending on the viewing scale, any edge that has been manufactured with conventional manufacturing techniques has a certain rounding.

Can it really be as simple as that (even though it was not a decisive issue of the case)? I do agree that the term has to be interpreted broadly. And I can’t know what had been pleaded, but the purpose of a rounding is pretty clear to me, i.e. to protect against injury and to facilitate insertion into other workpieces (see Wikipedia) — which makes perfectly sense to me in the context at hand. In my view, geometries that are not ‘fit for these purposes’ are not ’roundings’ according to the patent.

Does scrambling of claims have any limits?

The verbally limited claim essentially is a combination of claims 24 + 23 + 15 + 14 + 13 + 12 + 10 + 9 + 6 + 5 + 4 + 1 of the application as filed, or claims 13 + 8 + 7 + 4 + 3 + 1 of the patent as granted. On top of that, eight features in those claims were amended e.g. by way of making optional features mandatory, deleting alternatives, etc.

Defendant had argued that the resulting combination of features was not originally disclosed, i.e. that the amendment was unallowable. The court did not buy into that. Rather, the judgment holds that the resulting subject-matter was necessarily (‘notwendigerweise’) originally disclosed — in my reading, simply because it was in the claims, and even though many choices were made; ¶ 26.

That actually sometimes suprises me: A combination of (even many) claims and scrambling of features within the combined claims is hardly ever challenged in terms of allowability under Art. 123(2) EPC. But why is that? Is such a limitation really so different from the choices from multiple lists, which is only possible to very limited extent according to EPO practice? In the end, it’s all about clear and unambiguous disclosure in the application as filed. Does it make a difference whether the disclosure is in the claims as filed, or in the specification? What if the disclosure would not have been in the claims, but in ‘claim-like clauses’ of same content at the end of the specification; would that have made a difference?

Food for thought: To prevent trouble with the (very) strict approach of the EPO re allowability of amendments under Art. 123(2) EPC, let’s assume a Euro-PCT application based on a PCT application with literally all conceivable permutations covered in thousands of claims, with multiple dependencies. Such PCT applications are definitely out there already. Note that there are no claim fees for PCT applications, and the ‘application as filed’ in the regional phase at the EPO is the PCT application as filed (Guidelines B-VIII, 6). Happy life!(?).

Ex tunc effect of the verbal limitation

This is what the hn is all about. A patentee can partially waive the patent (Art. 24 PatA) with erga omnes effect, or he can verbally limit the patent with inter partes effect in civil proceedings. The judgment holds that the patentee’s right to invoke the patent to a limited extent is based on the principle of party disposition (‘Dispositionsmaxime’); ¶ 58.

However, what is the timely effect of a verbal limitation? The judgment holds that in the absence of an explicit legal basis, the court has to decide in accordance with the rule that it would make as a legislator; Art. 1(2) CC. In the court’s view, it suggests itself to assume the same ex tunc effect for a verbal limitation as is codified for a partial waiver; Art. 28a PatA.

Recall of products from commercial customers

The judgment provides some clarification about how a recall of infringing products from commercial customers is to be dealt with. The judgment holds that the recall shall be accompanied with a mentioning of the patent infringement. However, it is not necessary to offer a refund of the purchase price. The latter would amount to a disproportionate encroachment on the private autonomy of contractual relationships.

Reported by Martin WILMING

The decision has been appealed to the Supreme Court.

BIBLIOGRAPHY

Case No. O2019_012 | Decision of 30 August 2021 | ‘Sägeblätter’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Markus A. MÜLLER
    • Dr. Stefan KOHLER
    • Dr. Philipp RÜFENACHT
    • Dr. Daniel ALDER

Judge-rapporteur:

    • Dr. Markus A. MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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A hard-to-digest ‘Gugelhupf’

Reading time: 6 minutes

Case No. O2019_012 | Hearing of 1 July 2021

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

For some background information about the subject-matter at stake, please have a look at the comments concerning earlier summary proceedings between the same parties on this Blog here.

The patent in suit
Bosch’s logo

In brief, the invention is about a tool which is intended to be used with a machine, in particular a hand guided machine. The machine has a rotational drive, e.g. an oscillating drive.

In simple terms, it’s all about a somewhat special attachment device that transfers a torque from the driving device to the machine tool. It’s a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools
The alleged infringement
Coram’s logo

The plaintiffs assert that EP 362 (more precisely, the combination of independent claim 1 with dependent claims 13, 8, 3, 7 and 4) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’:

Grab and rotate the tool, to get an idea of
how ‘gugelhupfig’ the attachment device is …

A mishap

I understood from the pleadings that a mishap might have occured when the plaintiffs ‘limited’ EP 362 inter partes with the reply, i.e. when inter alia claim 13 was combined with claim 1. The relevant feature of claim 13 reads as follows (emphasis added):

[…] the attachment device (12) comprises an even number of driving area regions (2, 2a, 2b), preferably 4 or more, preferably 8 or more, and particularly preferably 16 or more, and further preferably 64 or less, preferably 48 or less, and particularly preferably 32 or less, most preferably 24,

It appears that claim 1 as limited inter partes now specifies that the attachment device comprises 4 or more and 32 or less driving area regions — but the feature of ‘an even number of driving regions’ got lost. Or has it been intentionally omitted? This is where the parties dissent. Plaintiffs argued that it cannot have been intended to delete the ‘even number’ when interpreting the request in good faith. In particular, the deletion was obviously irrelevant for validity and infringement. On the contrary, defendant argued that the deletion itself had been made intentionally (in mark-up and recited in the reply, maybe to block work-arounds with an odd number of driving area regions), but plaintiffs simply do not want to bear the consequences:

Möglicherweise wollten die Klägerinnen die Konsequenzen der Streichung nicht; aber die Streichung an sich haben sie gewollt.

allegedly unallowable amendments

Some further amendments were discussed re allowability. I will not discuss them all here, but I found one discussion concerning ranges particularly interesting. I understood from the pleadings that plaintiffs have formed ranges from the separate lists of upper and lower limits given in the claims (most likely former dependent claims 4 and/or 7). The case law of the EPO’s Boards of Appeal typically allows for some re-shuffling of limits from interrelated ranges. But this is not necessarily the case when there are only separate lists of lower limits and upper limits; see e.g. T 1919/11 (r. 2.2.2) where a combination of lower and upper limits from separate lists in two consecutive sentences of the specification was held unallowable.

The President asked the defendant whether they would have expected to infringe the respective claim when they exceeded the lowest value from the first list; defendant answered in the affirmative. Likewise, the President asked whether they would have expected to infringe that claim when they stayed below the highest value from the other list; again, defendant answered in the affirmative.

I am not sure where the President’s intervention was heading to. Does it make a difference if such a disclosure is not in the specification (as in T 1919/11) but rather in the claims? I don’t think it should. Allowability of amendments is all about clear and unambiguous disclosure of a (combination of) feature(s) in the application as filed — no matter, where. (Okay, leaving the abstract aside.) Scope of the claims as filed cannot matter. If it did matter, one could also narrow down an initially claimed genus (e.g. metal) to an initially undisclosed species (e.g. copper): Of course one would have expected to infringe a ‘metal claim’ when using copper. But one would not have expected that copper could specifically be claimed out of the blue, and that one would eventually need to invalidate a claim directed to copper.

Oral proceedings in co-pending opposition proceedings are scheduled for 12 October 2021. The claims currently on file with the EPO were held to be not allowable in the preliminary opinion of the OD. But I understand that these claims are not (yet) the ones that are on file in proceedings at the FPC; the final date for submissions in EPO proceedings is 12 August 2021.

At the end of the hearing, the President mentioned that a decision can be expected only after judicial vacations (i.e. after 15 August 2021) but very likely before 12 October 2021.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_012 | Hearing of 1 July 2021

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Markus A. MÜLLER
    • Dr. Stefan KOHLER
    • Dr. Philipp RÜFENACHT
    • Dr. Daniel ALDER

Judge-rapporteur:

    • Dr. Markus A. MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Andri HESS (Homburger)
    • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters
    • Dr. Niklaus KRÄNZLIN (Gachnang), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

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