Hold on tight: Sanipat and Hafner litigating about sealing strips with cut protection

Case No. O2019_005

Reading time: 2 minutes
Hafner’s logo

I came across the complaint in an infringement case that is pending at the FPC, between Sanipat GmbH and Hafner AG.

Sanipat asserts EP 2 405 067 B1 and CH 703 691 against certain sealing strips for shower trays, i.e. Hafner’s ISO-SET®.

Hafner’s website

Sanipat’s CH’691 has already been partially surrendered twice, see below.

EP’067 is currently being challenged in EPO opposition proceedings, see EPO Register. Hafner joined the pending opposition proceedings by intervention; Art. 105(1) lit. a EPC. Oral proceedings are scheduled for 28 November 2019.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

  • [tbc]

Judge-rapporteur:

  • [tbc]

Court Clerk:

  • [tbc]

Representative(s) of Sanipat:

Representative(s) of Hafner:

  • [tbc]

COMPLAINT AS FILED

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EP 2 405 067 B1

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CH 703 691

Second partial surrender, published on 30 April 2019:

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First partial surrender, published 30 November 2016:

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Patent as initially granted:

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The first thematically structured main hearing at the FPC: Role model or nonstarter?

Reading time: 5 minutes

Case No. O2016_016 | Hearing of 8 May 2019

The patent at stake is MundiPharma‘s EP 2 425 825 B9; see EPO Register and Swissreg.

EP’825 pertains to a combination of oxycodone hydrochloride (in an amount of 10 to 150g) and naloxone hydrochloride (in an amount of 1 to 50g), in a weight ratio of 2:1.

This combination is an analgesic drug that is available as modified-release tablets under the trade name Targin® by MundiPharma. Oxycodone is an opioid that has pain-relieving effects. Naloxone opposes the effects of opioids but is poorly absorbed when given orally; it stays within the gastrointestinal tract and reduces the local side effects of oxycodone.

Develco’s logo

Develco seeks annulment of EP(CH)’825 for various reasons, i.e. undue extension of subject-matter, non-enablement and invalidity of the priority claim. On the merits, Develco argues that EP’825 is not novel over WO 01/58451 A1, and that it is obvious in view of EP 0 352 361 A1 or WO 01/58447 A1 or WO 02/092060 A1 or in view of the entry in the ‘Rote Liste’ 2001 for the product Valoron® N capsules from Gödecke.

MundiPharma’s logo

Defendant / patentee MundiPharma countersued for infringement.

It was evident from the pleadings that the expert opinion of the judge-rapporteur had held that the patent was invalid for undue extension of subject-matter. Note that the first instance decision at the EPO (11 December 2018) and the Barcelona Commercial Court No. 4 (19 December 2018) came to the same conclusion. While an appeal is still pending at the EPO, the decision in Spain is already final.

The most interesting part of the hearing was actually how the FPC had structured it. Normally, the parties are just given the floor, one after the other, to plead on all relevant aspects of the case. Not so this time. The FPC wanted to hear the parties on a single aspect only, before moving on to the next aspect. Very much like hearings at the EPO are conducted. Apparently, the FPC had also indicated beforehand that a preliminary opinion would be given on each aspect right after the pleadings relating thereto. However, the patentee / defendant objected, and the court thus abstained from doing so.

Maybe, or maybe not …

On a personal note, I don’t see much value in a ‘preliminary’ opinion of the court being issued in the main hearing. Since one cannot take this opinion for granted, one has to effectively ignore it in all the following pleadings, and be prepared for an outcome to the contrary.

But it still is an interesting approach that could well be taken to the next level, in my perception: What about making a break after the pleadings on each aspect for the judges to deliberate and actually decide on that issue, and pronounce the decision right thereafter? That works perfectly fine at the EPO, and a nullity case at the FPC doesn’t differ much.

Lawyers may prove me wrong, but I do not readily see why this shouldn’t be possible in civil proceedings governed by the CPC.

Reported by Tina VOCI and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_016 | Hearing of 8 May 2019

Develco Pharma Schweiz AG
./.
MundiPharma Medical Company

Panel of Judges:

  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Hannes SPILLMANN

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Develco:

  • Andrea MONDINI (TIMES)
  • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

Representative(s) of Mundipharma:

  • Dr. Simon HOLZER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters

ANNOUNCEMENT

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PATENT IN SUIT

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Writing instrument: The Supreme Court’s final stroke

Case Nos. 4A_435/2018, 4A_441/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Please see this Blog here for a detailed review of the underlying decision of the FPC in this matter.

Both parties had lodged an appeal — but the Supreme Court dismissed both appeals. While the FPC’s judgement was quite a booklet of 50+ pages, it took the Supreme Court only 7 pages to deal with both appeals. Most of the judgment indeed is pretty straight forward. Still, the judgment has quite some interesting aspects, in my perception:

  1. Assignment of a patent does not imply assignment of the universal right to the invention per se 
Montres Valgine logo

Guenat had requested that Swiss Finest‘s Swiss patent be annulled based on Art. 26(1) lit. d PatA, i.e. for lack of entitlement. However, such request can only be brought by the entitled person; Art. 28 PatA. Guenat alleged that Frédéric Garinaud transferred ‘full and complete ownership’ of the European patent application to Guenat. But that did not help. Frédéric Garinaud specifically assigned the European patent application to Guenat, but not the universal rights in the ‘invention’ itself. Guenat’s request for declaration of nullity based on Art. 26(1) lit. d PatA was thus held inadmissible for lack of standing.

On appeal, Guenat criticises the FPC’s ‘artificial dichotomy’ between the invention and the related patent application, and claims complete control over the invention in dispute. The Supreme Court didn’t buy into that. The decision holds in ¶3.2 that Guenat’s argument is based on an assumption about the parties’ intention in respect of the transfer agreement of April 2013. This is not a question of law, but of fact. But the FPC had not found that the real and common intention the parties had been to assign all intellectual property rights to the invention and the right to be granted all related patents. On the contrary, according to the FPC, the agreement in question ‘clearly refers only to the European patent application and the resulting European patent, and not to the invention as such’ — which finding is binding on the Supreme Court since it is not ‘arbitrary.’

Thus, the Supreme Court apparently had no doubt that the assignment of a specific patent does not necessarily imply the assignment of the universal rights in the invention itself.

  1. Assessment of inventive step is a question of law, but …

Guenat argued on appeal that the FPC had violated the principle of party disposition because it took facts into account that had not been alleged by the defendant.

Now, what had happened?

The FPC had held that a specific feature (C3-1) was not disclosed in the closest prior art document. Guenat had a different understanding of the specific feature, and had argued that based on a ‘correct’ understanding of the feature it had well been disclosed in the closest prior art.

Swiss Finest logo

On appeal, Guenat argued that Swiss Finest had not even alleged that feature C3-1 was not disclosed in that document. Unfortunately, it is not readily clear from the decision to which version of feature C3-1 that allegation pertained: The feature as construed by the Guenat, or the feature as construed by the FPC?

The Supreme Court held that it had not been disputed that all the factual elements necessary for the analysis of obviousness had been brought on file by the parties. Further, the Supreme Court held that Guenat had not asserted that the FPC had to supplement the facts on its own, and that such conduct was also not apparent from the file. In the Supreme Court’s view, the FPC was thus in a position to assess obviousness, which is a question of law. It is irrelevant in this respect that the presence or absence of specific features in the prior art and/or the patent have been alleged by the defendant or the plaintiff. On the basis of the facts gathered by the parties in order to consider a question of law, the court did not violate the principle of party disposition.

Without any in-depth knowledge of what had or had not been argued by the parties, I just cannot say whether I would agree with the assessment on the merits of the case. But the Supreme Court’s general considerations on questions of law vs. questions of fact trigger some further thoughts.

Clearly, assessment of obviousness is a question of law — but the underlying factual elements still need to be asserted by the parties. But what are the ‘factual elements’? They must be something more specific than just ‘the patent in suit’, ‘D1’ or the like. Else, a court could just combine whatever is on file in its assessment of obviousness, fully detached from the pleadings. This cannot be it. Now, let’s assume that both parties come up with a somewhat strange claim construction, and base all their obviousness attacks / defenses on a wrongly construed claim. In my understanding, claim construction clearly is a question of law, too (see e.g. X ZR 255/01 – ‘Bodenseitige Vereinzelungseinrichtung’ of the German Federal Supreme Court in ¶5, with further reference). But what if no party ever pointed to the relevant underlying ‘factual elements’ (i.e. specific sections of the patent in suit) that support the ‘correct’ claim construction? May the court then even come up with a different / the ‘correct’ claim construction at all?

UPDATE 21 March 2019:

Note that the FPC had held in the recent decision S2018_006 that claim construction is a question of law. In that case, both parties had not construed the feature in question at all, and the FPC came up with a construction on its own:

Wie der Begriff korrekt auszulegen ist, tragen die Beklagten hingegen ebenso wenig wie die Klägerin vor. Da die Auslegung des Patentanspruchs eine Rechtsfrage ist,15 geht die Annahme der Beklagten fehl, das Gericht dürfe den Anspruch mangels entsprechenden Vortrags der Klägerin nicht so auslegen, dass er auch etwas anderes als einen Schneidprozess erfasst.
15 Federal Supreme Court: 4A_142/2011, ¶1.3
But, again, what if both parties came up with a claim construction mutually agreed upon — but which, in the courts view, is just wrong? Or, what if both parties come up with different constructions which are both wrong in the court’s view? Can the court then correct such (a) construction(s) if it would have to rely on ‘factual elements’ that have never been pointed at by the parties, just because it is a question of law? And if that was the case, then where is the limit in the assessment of obviousness — which is a question of law, too?

The theory of separating questions of law from questions of fact is simple. But life is complicated …

On a sidenote: Wouldn’t it be good to establish common ground on what the claim actually is all about before diving any deeper? This is what a Markman hearing in the U.S. is all about. Even though I am not overly enthusiastic about quite some aspects of patent litigation in the U.S., this one certainly is useful.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_435/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine (appellant)
./.
Swiss Finest SA (respondent)

and

Case No. 4A_441/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Swiss Finest SA (appellant)
./.
Guenat SA Montres Valgine (respondent)
Both proceedings were jointly dealt with by the Supreme Court.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Guenat SA Montres Valgine:

Representative(s) of Swiss Finest SA:

  • Christoph KÜNZI (CBK)

SUPREME COURT
on appeal against O2015_018 (FPC) | Decision of 15 June 2018
Case nos.: 4A_435/2018
4A_441/2018
Decision of: 29 January 2019
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PATENT COURT
Case no.: O2015_018
Decision of: 15 June 2018

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CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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Exhaustive discussion through all instances: The list of grounds for nullity is exhaustive.

Case No. 4A_415/2018 (Supreme Court) ¦ Decision of 7 December 2018, on appeal against O2017_016 (FPC) ¦ Decision of 12 June 2018

Reading time: 10 minutes

The setup of this case is pretty simple:

Salmon Pharma as the defendant in SPC infringement proceedings neither disputed validity of the basic patent EP 0 716 606 B1 of Genzyme Corporation, nor that the subject-matter of the SPC C00716606/01 is actually covered by the basic patent or that the attacked embodiment (sevelamer carbonate) is covered by the SPC. Rather, the defendant (only) alleged that the SPC was invalid because the IPI wrongfully allowed re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

Following-up on a decision granting interim injunctive relief (see the detailed report on this Blog here), the FPC had confirmed with a decision in main proceedings that the list of grounds for nullity of an SPC as set forth in Art. 140k PatA is exhaustive; the allegedly wrongful reinstatement was thus held to be no valid ground of nullity (see this Blog here).

The question as to whether the lists of grounds for nullity in Art. 26 and Art. 140k PatA are exhaustive had indeed not yet been explicitly decided by the Supreme Court before. However, the present judgment refers to an indication in 4A_52/2008, ¶2.2, according to which the grounds for invalidity for the certificate are listed in Art. 140k PatA. Furthermore, in application of the Patent Act of 1888, the Federal Supreme Court had already held that the grounds for invalidity of patents were exhaustively listed therein (28 II 309, ¶5). I just love to read such old decisions. Amazingly straight to the point; and the type face is so stylish:

Decision 28 II 309 of 2 May 1902 (snapshot)

Unsurprisingly, the Supreme Court takes the case-law of the Court of Justice of the European Union (ECJ) on Art. 15 of Regulation (EC) No 469/2009 (or Regulation (EEC) No 1768/92) into account, in view of the legislator’s explicit intent to bring the Swiss rules into line with European law.

However, the Supreme Court could not infer anything from the ECJ’s case-law in support of Salmon’s position. Rather, the Supreme Court confirms the FPC’s reasoning: The ECJ only affirmed the nullity of certificates due to the non-observance of standards which are not explicitly mentioned in Art. 15 of Regulation No 1768/92 by referring to Art. 15 as interpreted in view of Art. 3.

For example, in C-127/00 — Hässle ./. Ratiopharm, the ECJ held that failure to comply with the transitional regime of Art. 19 of Regulation No 1768/92 may result in the certificate being invalid. The requirement under Art. 19 is to be understood as an implicit substantive requirement additional to the conditions laid down in Art. 3 of the Regulation. A certificate which was granted even though an initial marketing authorisation had already been granted before the date laid down in Article 19 of the Regulation is therefore null and void; ¶¶84-92).

Likewise, in C-195/09 — Synthon ./. Merz Pharma, the ECJ held that Art. 3 of Regulation No 1768/92 necessarily referred to a product falling within the scope of that regulation within the meaning of Art. 2 thereof. A certificate granted for a product falling outside the material scope of the Regulation should be considered null and void; ¶56.

It cannot be inferred from these judgments that the list of grounds for nullity in accordance with Art. 15 of the Regulation is not to be understood as exhaustive. On the contrary, the ECJ stated that it could not be inferred from either the wording or the history of Art. 15 of the Regulation that the list of grounds for nullity of the certificate referred to therein was not exhaustive (Synthon, ¶55; Hässle, ¶¶90-91).

The Supreme Court thus held that the lists of grounds for invalidity of both Art. 26 and Art. 140k PatA cannot be supplemented. Consequently, in the context of a patent nullity action or a nullity action relating to an SPC, only the grounds provided for in these provisions may be invoked. The Supreme Court notes in passing that legal certainty demands for this, too.

Angesichts dessen, dass es sich bei der Nichtigkeit eines Patents bzw. Zertifikats um eine schwerwiegende Folge handelt, entspricht dies dem Gebot der Rechtssicherheit.

Next, the Supreme Court assessed whether non-compliance with the deadline for filing the request pursuant to Art. 140f PatA or wrongful reinstatement pursuant to Art. 47 PatA, could be subsumed under a ground for invalidity pursuant to Art. 140k PatA. However, this is neither apparent nor does it result from the relevant case-law of the ECJ.

Finally, the Supreme Court notes that SPCs and patents are granted by order of the IGE (144 III 285, ¶3.2). Nullity under Art. 26 and Art. 140k PatA is not to be mixed up with the administrative contestability or nullity of the dispositions of the IPI on which the grant of a patent or SPC is based. In other words, the fact that the catalogues of grounds for invalidity under the PatA are exhaustive does not mean that these dispositions cannot be contestable or void, which must be assessed according to general principles of administrative law.

Dass die Kataloge der patentrechtlichen Nichtigkeitsgründe abschliessend sind, bedeutet […] nicht, dass diese Verfügungen nicht anfechtbar bzw. nichtig sein können, was nach allgemeinen verwaltungsrechtlichen Grundsätzen zu beurteilen ist.

Interestingly, the Supreme Court explicitly left the question open whether the decision of grant of the SPC (or the earlier decision of 4 April 2005 concerning reinstatement) could have been challenged by the appellant, as the FPC had assumed: Any relevant time limit had expired since long, anyway. On the other hand, the nullity of a decision must be observed by all authorities applying the law at all times (137 I 273, ¶3.1; 133 II 366, ¶¶3.1-3.2; 132 II 342, ¶2.1; 129 I 361, ¶2; each with further references to case-law).

Incorrect administrative acts are usually not null and void, but only contestable; and they become legally effective when not challenged. Invalidity, i.e. absolute ineffectiveness, of an order is only accepted if it is afflicted with a profound and substantial defect, if this serious defect is obvious or at least easily recognisable and if the legal certainty is not seriously jeopardised by the acceptance of invalidity. Deficiencies in content only rarely result in the nullity of an order, in exceptional cases; this requires an extraordinarily serious deficiency. The main grounds for invalidity are the functional and factual lack of competence of an authority and serious procedural irregularities (such as the fact that the person concerned did not have the opportunity to participate in the proceedings). If an order is not legally binding in this sense, any authority dealing with the matter must comply with it at all times and ex officio (see, inter alia, 138_II_501, ¶3.1; 137 I 273, ¶3.1; 136_II_489, ¶3.3).

Salmon had argued that reinstatement was granted ‘arbitrarily and contrary to the clear and decades-long practice’ of the IPI. Again, the Supreme Court left undecided whether the IPI indeed wrongly allowed reinstatement because the alleged misjudgment could not be a defect that leads to the nullity of the decision. In particular, the Supreme Court held that any such deficiency would be neither obvious nor easily recognisable: By definition, reinstatement is a remedy when something went wrong, i.e. in the event that a time limit prescribed by the law was not observed.

Finally, in simple terms, the Supreme Court notes: The IPI had come to the conclusion that the conditions for reinstatement pursuant to Art. 47 PatA were met. The appellant may not share this view, but the administrative act is still not null and void.

Das IGE ist zum Schluss gekommen, dass die Voraussetzungen für die Wiedereinsetzung gemäss Art. 47 PatG gegeben waren. Die Beschwerdeführerin mag diese Einschätzung nicht teilen; ein nichtiger Verwaltungsakt liegt jedoch nicht vor.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_415/2018 (Supreme Court) ¦ Decision of 7 December 2018, on appeal against O2017_016 (FPC) ¦ Decision of 12 June 2018

Salmon Pharma GmbH

./.

  1. Genzyme Corporation
  2. Sanofi-Aventis (Suisse) SA

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Salmon Pharma:

  • Dr. Robert BRINER (CMS)

Representative(s) of Genzyme, Sanofi-Aventis:

SUPREME COURT DECISION

On appeal against decision O2017_016 of 12 June 2018:
4A_415/2018 7 December 2018
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SECOND FPC DECISION

Main proceedings, following up on decision S2016_009 of 4 July 2017:
O2017_016 12 June 2018
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FIRST FPC DECISION

Summary proceedings:
S2016_009 4 July 2017
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BASIC PATENT

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Supreme Court confirms FPC’s decision O2015_008 — Omega’s appeal dismissed

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC)¦ ‘Balancier de montre’

Reading time: 5 minutes

As to the background of this matter, please see the report about the main hearing on this Blog here and the discussion of the first instance decision of the FPC on this Blog here.

In brief, Omega had alleged infringement of its EP 1 837 719 B1; see the EPO Register and Swissreg for further bibliographic details of the patent in suit. With decision of 14 March 2018, the FPC had rejected Omega’s claim for infringement while Tudor’s / Detech’s counterclaim for invalidity had been allowed; EP(CH) 1 837 719 B1 had been declared invalid.

The Supreme Court now dismissed Omega’s appeal, i.e. confirmed the FPC’s decision. EP(CH) 1 837 719 B1 is thus finally declared invalid.

The issues dealt with by the Supreme Court in the decision, in brief:

  1. Age of a prior art document 

On appeal, Omega has argued that the FPC took an unrealistic piece of prior art into account in the assessment of inventive step. Indeed, the FPC had considered a document that was published already about a century ago, i.e. US 759,914. In view of the evolution of watchmaking since then, Omega considered it unrealistic that such a document was actually considered as a starting point in the assessment of inventive step. Consequently, Omega alleged a violation of Art. 56 EPC.

The Supreme Court did not buy this argument. It is held in no uncertain terms that everything that had been made publicly available — including old documents — forms part of the prior art. One cannot exclude a document from consideration in the assessment of inventive step just because of its age; see ¶3.1.3.

Écarter un document de ceux que consulterait l’homme de métier en raison de son ancienneté reviendrait à priver les brevets ayant dépasé un certain âge de toute valeur dans le cadre de l’analyse de l’effet invenif. Un telle pratique ne saurait être déduite de l’art. 65 CBE.

Reference to some case-law of the Boards of Appeal of the EPO did not help either: The mere age of a document has not been decisive in T 479/00, T 366/89, T 1000/92 and T 334/92. The Supreme Court notes that the obsolescence or outdatedness of a technology had been the key issue in these decisions, which excluded the respective documents from consideration by the skilled person. Apparently, no such case had been established by the appellant in the present matter.

  1. Incompatibility of technical teachings

The balance wheel of US 759,914 has inertia blocks that must have been placed from the inside, as claimed by the patent in suit; see the screw head on the inner side of the felloe in the figures below.

But what is still missing here is the stud (‘plot’) according according to the patent in suit. Omega argued that the skilled person would not have added studs to the balance of US 759,914 in view of the risk to impair the automatic adjustment of its temperature dependent moment of inertia, which is the sole purpose of this invention. However, the Supreme Court holds that this is not in agreement with the fact findings of the FPC, and thus did not consider this argument any further.

  1. Choice of the closest prior art

The FPC had not explicitly motivated its choice of US 759,914 as the closest prior art in the assessment of inventive step in accordance with the problem-and-solution approach.

Kind reminder …

And the Supreme Court indeed acknowledges that it would have been desirable if it had done so.

Ainsi, il eût été souhaitable que la juridiction précédente détaille la première étape de l’approche problème-solution comme elle l’a fait pour les autres étapes de son examen.

But still, in view of the FPC’s detailed discussion of how the skilled person had arrived at the invention starting from US 759,914 without inventive merit, it became sufficiently clear how close both inventions actually are, and why US’914 thus is a reasonably chosen closest prior art.

  1. Late filed auxiliary requests / claim limitations

Omega had filed yet another, even more limited auxiliary request (AR3) with the response to the expert opinion of the judge-rapporteur. The FPC had not admitted this request into the proceedings anymore, with reference to O2015_012.

Omega had challenged this on appeal. But while this appeal has been pending, the Supreme Court ruled on the appeal against O2015_012 — and backed the practice of the FPC in this respect; decision 4A_543/2017 of 08 May 2018, see this Blog here. Accordingly, Omega did not succeed with this argument, either.

In sum, Omega’s appeal was dismissed and EP(CH) 1 837 719 B1 is now finally declared invalid.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC) ¦ ‘Balancier de montre’

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of appellant / plaintiff:

Representative(s) of defendants / respondents:

SUPREME COURT DECISION 

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FPC DECISION 

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PATENT IN SUIT

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Go with the flow

Reading time: 4 minutes

Case No. O2016_009 | Hearing of 29 October 2018

iFlow sensor

Please find some background information about the subject-matter at stake on this Blog here.

In brief, Hamilton Medical AG alleges infringement of its Swiss patent CH 701 755 B1 (see Swissreg for further bibliographic details) by some of imtmedical AG‘s iFlow sensors. The only independent claim 1 of the patent as granted reads as follows:

Durchflussmessfühler (10) mit einem ein zylindrisches Gehäuse (10) definierenden Durchgang mit einer ersten Durchgangsöffnung (13) und einer zweiten Durchgangsöffnung (29); einem im Durchgang des Gehäuses angeordneten Strömungswiderstand (23), welcher das Gehäuse in einen ersten und einen zweiten Gehäuseteil (11 und 27) unterteilt; einer ersten Anschlussstelle (17) mit einer Verbindung zum Innern des ersten Gehäuseteils (11); und einer zweiten Anschlussstelle (19) mit einer Verbindung zum Innern des zweiten Gehäuseteils; dadurch gekennzeichnet, dass die ersten und zweiten Anschlussstellen (17, 19) in einem Abstand voneinander auf dem gleichen Gehäuseteil angeordnet sind.

Fig. 1 of CH 701 755 B1

The defendant denies an infringment, and argues for nullity as a plea in defense.

This case is already pending for two years. Likewise, the main hearing yesterday has been quite lengthy: Plaintiff’s initial pleadings took about 2.5 hours, and defendant’s reply took yet another two hours. The hearing was not even finished thereafter, but we just could not attend any longer. Anyway, some key aspects of the case became pretty clear from both parties’ first pleadings.

In our understanding, the expert opinion of the judge-rapporteur had held that the patent as granted was not valid. However, the judge-rapporteur apparently also held that the patent would be valid in a more limited extent, and that it would still be infringed to that extent. The plaintiff had invoked the patent to that limited extent in the second part of his reply, after the instructional hearing. Defendant firmly denied that this ‘verbal limitation’ (verbale Einschränkung) was admissible and argued that the case had to be dismissed if claim 1 of the patent as granted was invalid.

UPDATE 10 February 2019:

A previous version of this post noted that the patentee invoked the patent to a more limited extent only after receipt of the expert opinion of the judge-rapporteur. This was wrong. He did so already in the second part of his reply, after the instructional hearing. This has been corrected in the above.

Further, the defendant relied on i) a prior use; and ii) US 6,585,662 when arguing for lack of an inventive step.

Fig. 8 of US 6,585,662
Uphill fight

It remains to be seen how all this turns out, but from what has been argued at the hearing we conclude that it is currently an uphill fight for the defendant. And it did not seem as if this was a case to be concluded with a settlement. Stay tuned.

Reported by Tina VOCI and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_009 | Hearing of 29 October 2018

Hamilton Medical AG
./.
imtmedical AG

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Lorenzo PARRINI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Christoph GASSER (BianchiSchwald)
  • Renato BOLLHALDER (Bohest), assisting in patent matters
  • Dr. Torben MÜLLER (Bohest), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Rudolf RENTSCH (IPrime)
  • Ernst BREM (IPrime)
  • Paul ROSENICH (PPR)
  • Joachim KÜNSCH (PPR)

CH 701 755 B1

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Claim dismissed, counterclaim dismissed: Huge expense, no recompense

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

The FPC handed down the decision in this remarkable litigation about a highly complex mechanical writing system. Please see this Blog here for a report about the main hearing and some background information.

What follows is a rather lengthy post, but this is due to the complexity of the case, both procedurally and technically.

  1. Party positions in a nutshell

It started off with Guenat‘s request that Swiss Finest‘s CH 704 790 B1 be declared invalid; note that the patent has been limited in March 2017 and re-published as CH 704 790 C1, see Swissreg for further bibliographic details. Guenat argued that the invention had been made by Frédéric Garinaud, an independent inventor who is quite renown for being the mastermind behind the Harry Winston Opus 8. Frédéric Garinaud had filed a patent application for a writing instrument; this patent application has then been assigned to Guenat and a patent was granted; EP 2 479 648 B1, see Swissreg and European Patent Register for further bibliographic details.

In Guenat’s view, the subject-matter of the Swiss Patent was invented by Frédéric Garinaud before it was used by Swiss Finest, and Frédéric Garinaud never transferred his patent rights to Swiss Finest. Guenat further argued that the invention of the Swiss Patent is obvious in view of a PowerPoint Presentation which had been sent to a third party without confidentiality obligation. Frédéric Garinaud being the only creator of the technical teachings contained in Garinaud’s European Patent and having transferred his patent rights to the plaintiff, Guenat argues that the defendant has no right to the Swiss Patent.

Swiss Finest countersued and requested that Guenat’s EP’648 be declared invalid, or assigned to Swiss Finest. Swiss Finest argued that in autumn 2010, Frédéric Garinaud had only a vague idea but had not yet completed an invention at that time. The invention was only made later with the substantial contribution of Swiss Finest’s employees after Frédéric Garinaud’s appointment as Creative Director, and any rights in the invention had been assigned to the defendant by employment contract.

Later, Swiss Finest argued that if Frédéric Garinaud was nevertheless considered to have already conceived the invention in the fall of 2010, the patent rights in this invention had been transferred to a simple partnership founded by Fabrice Thueler (owner of Swiss Finest) and Frédéric Garinaud in the preparation of a company ‘Garinaud SA’ which was foreseen to exploit the invention in dispute. Swiss Finest held thus to be the legitimate owner of the rights in the invention which is the subject of the Swiss Patent and, since the invention of the European Patent is the same, it is also entitled to the European Patent. Further, the subject-matter of the Swiss Patent was new and inventive in Swiss Finest’s view, since the PowerPoint presentation had not become publicly available because it had been sent only under an implicit confidentiality obligation. Even if one were to consider that the presentation was to be considered as prior art, the subject-matter of the Swiss patent is nonetheless inventive.

As if all this was not confusing enough, the case was spiced up further with Swiss Finest’s counterclaim for infringement by the Mechanical Fountain Pen RMS05:

Fountain Pen RMS05 by Richard Mille

This product has some amazing mechanics; see yourself:

In brief:

It’s complicated. Very complicated.

  1. The parties’ requests — and why they failed

The stage is set with a rather complicated factual situation. But at least some of the request could be dealt with quite straight forward by the court:

  1. Nullity for lack of entitlement

Guenat had requested that Swiss Finest’s Swiss patent be annulled based on Art. 26(1) lit. d PatA, i.e. for lack of entitlement. However, such request can only be brought by the entitled person; Art. 28 PatA. Guenat alleged that Frédéric Garinaud transferred ‘full and complete ownership’ of the European patent application to Guenat. Even though the inventions in both (Guenat’s) European and (Swiss Finest’s) Swiss patent may well be the same, this did not help. Frédéric Garinaud specifically assigned only the European patent application to Guenat, but not to the invention itself.

Guenat’s request for declaration of nullity based on Art. 26(1) lit. d PatA was thus held inadmissible for lack of standing.

  1. Nullity for lack of inventive step

Novelty of Swiss Finest’s Swiss patent after partial surrender was not contested anymore. But Guenat alleged obviousness over the PowerPoint presentation that had been sent to Hamdi Chatti of Louis Vuitton in 2010, in further view of i) F. Lecoultre, Les Montres Compliquées, 3ème éd. Neuchâtel 1985; ii) Huguenin / Guye / Gauchat, Les Echappements, 2ème éd. Neuchâtel 1974; and/or EP 1 221 383 A1.

Louis Vuitton logo

With respect to the PowerPoint presentation, the parties dissented whether or not it had been sent to Hamdi Chatti with an implied confidentiality obligation. The last page of the PowerPoint presentation mentioned ‘breveté’ (‘patented’), even though the Swiss patent application had not yet been filed. Frédéric Garinaud was apparently aware of this faux-pas; he wrote to his patent attorney:

I confess I anticipated the patent application.

The decision holds that under the specific circumstances there was no implicit confidentiality obligation associated with the PowerPoint presentation.

It then remained undisputed that the PowerPoint presentation was the closest prior art. However, quite a lot of differentiating features were missing. The missing features could be grouped into three aspects, and three partial problems are dealt with in the decision:

amovibilité the removable endpiece allows wide access to the pen holder, and indirectly to the other components housed in the front part of the writing instrument, avoiding manipulation by the writing tip;
échappement the choice of an escapement as a control mechanism offering a simple and proven solution to control energy release, while producing an audible indication;
verrouillage cooperation between the actuator and the locking system to unlock the power source to release the writing tip when the actuator is actuated, without additional action.

This is the only picture from the PowerPoint presentation in the decision:

PowerPoint presentation

As to the locking system (‘verrouillage‘), the decision holds that this was readily obvious (if not implicitly disclosed already in the PowerPoint presentation). Likewise, the escapement (‘échappement‘) is held obvious in further view of Lecoultre:

Lecoultre, p. 113

However, the removable endpiece (‘amovibilité‘) was more tricky, and the decision holds that this was not obvious from the cited prior art. When seeking a solution to the problem of replacing the ink cartridge, the skilled person would not have thought of a removable endpiece. Instead, he would have e.g. made a pen in which the writing tip as such is detachably mounted on the body or tip, like e.g. in EP'383:

EP 1 221 383 A1, Fig. 1

Thus, the subject-matter claimed in Swiss Finest’s Swiss patent was held to be non-obvious over the cited prior art.

  1. Nullity for yet further reasons

Guenat argued for nullity of Swiss Finest’s Swiss patent for yet further reasons.

First, an alleged undue extension of subject-matter (Art. 26(1) lit. c PatA) in the course of the partial surrender according to Art. 24 PatA; see the B1 and the C1 version of the Swiss patent below.

Second, Guenat alleged a lack of enabling disclosure; Art. 26(1) lit. b PatA.

Without setting out all the details here, both these alleged grounds of nullity failed for apparently straight forward reasons.

  1. Entitlement to Guenat’s European patent

The invention disclosed in the European Patent was already disclosed or was obvious to a large extent from the PowerPoint Presentation prepared and sent by Mr. Garinaud on November 17, 2010; see above — with the only exception of the removable endpiece. This removable endpiece was first mentioned by Frédéric Garinaud’s patent attorney François-Régis Richard (e-patent). In an email dated December 9, 2010, he wrote to Frédéric Garinaud:

I am also realizing that for the change of the cartridge, it would probably be simpler to disassemble the pen by its front part to avoid exposing the watch mechanism in the back.

This undisputedly was the first note of the removable endpiece. Whether the rights to this creative contribution were transferred to Frédéric Garinaud, as alleged by Guenat, could remain open. In any event, it had not been alleged that François-Régis Richard transferred the rights to Swiss Finest. Rather, Swiss Finest only held that the invention was made by Frédéric Garinaud when he was employed at Swiss Finest — which could not be true given the PowerPoint presentation and the email of December 9, 2010.

The decision thus holds that the subject-matter of claim 1 of the Swiss patent was created by Frédéric Garinaud before its use by Swiss Finest — with the exception of the removable endpiece which was proposed by François-Régis Richard without having assigned his rights in this contribution to the defendant.

In anticipation of this outcome, Swiss Finest apparently modified its position later and alleged that it had obtained rights in the European Patent by virtue of a simple partnership agreed between Frédéric Garinaud and Fabrice Thueler in preparation of a company ‘Garinaud SA’ to be established.

However, this was not convincing, either. The decision holds that it is unclear how the right to the patent, even if it had been transferred to the simple partnership, should finally reside with Swiss Finest. Members of a simple partnership are joint owners of the assets, with the consequence that they can only dispose of them jointly. In any event, according to the defendant’s allegations, Frédéric Garinaud and Fabrice Thueler were the partners of the simple partnership. A patent right could therefore only belong to them jointly. However, the defendant did not allege that Frédéric Garinaud agreed to transfer the right to the patent to it.

  1. Injunctive relief

Swiss Finest’s request for injunctive relief in respect of the ‘Mechanical Fountain Pen RMS05’ failed for a lack of concreteness of the attacked embodiment. See e.g. this Blog here (O2012_004, ‘Leichtbeton’) for further information on the necessary concreteness of a request for injunctive relief.

Swiss Finest did not argue for literal infringement, but rather only for infringement under the Doctrine of Equivalents (DoE); see below. Still, the request for injunctive relief merely recited the wording of the claims, and was thus held inadmissible.

  1. Infringement by the Mechanical Fountain Pen RMS05
RMS05 (annotated)

Even though the request for injunctive relief was held inadmissible, the court still dealt with had to assess whether or not the RMS05 was infringing. Confused? I will clarify this later; see below.

It was undisputed that the RMS05 did not comprise a removable endpiece (’embout amovible’). However, Swiss Finest alleged that the function of the removable endpiece is to allow the writing tip to be removed from the pen body to allow an ink cartridge to be inserted or replaced. Swiss Finest further alleged that the fountain pen holder (indicated by the white arrow in the annotated figure) can be unscrewed and removed from the body using a wrench formed in the cap of the pen to place and replace an ink cartridge. In Swiss Finest’s view, the removable fountain pen holder inserted into the endpiece of the RMS05 amounts to an infringement under the DoE.

First, the court carefully defined the function of the removable endpiece in the context of the invention and reverted to ¶ [0015] of the Swiss patent:

It can still be noted that, to have access to the pen holder, the endpiece is screwed on the body and can therefore be unscrewed. The ink supply can then be changed by disassembling the pen holder and the intermediate holder.

The decision holds that this function does not exist in the RMS05. The endpiece is not removable and the disadvantage of the access to the fountain pen holder still remains in the RMS05. The fact that the fountain pen holder of the attacked embodiment can be removed does not change anything in this respect, because according to the Swiss Patent, after unscrewing the endpiece and facilitating access, the fountain pen holder is also removed to replace the cartridge.

As can be seen in the below screenshot of this video on YouTube, the fountain pen holder can be gripped with the cap and removed to replace the ink cartridge. However, the endpiece is fixed (indicated by the white arrow in the screenshot below).

RMS05, replacement of ink cartridge

Therefore, there is no removable endpiece in the RMS05, neither literally nor under the DoE, because the function of the removable endpiece is not realized in this pen. Thus, already the first question of the questionnaire established with O2014_002 was denied.

In sum, neither party succeeded with any attack. This somehow reminds me of the ‘Hornberg salute’:

‘Hornberger Schiessen’
  1. What the decision might be cited for
  1. Competency for assignment of all national validations of a European patent

Swiss Finest had requested that Guenat’s European patent be assigned to them. This was interpreted by the court as to concern all national validations of the meanwhile granted patent. To the best of my knowledge, it had been mentioned for the first time in O2015_009, ¶ 2.1, that the FPC is competent to decide also on ownership of foreign rights — without any in-depth discussion because it had not been decisive anymore in that case.

Not so here. The court now took the chance to set out its reasoning in any detail in ¶ 10 of the decision. The question of ownership of IP rights does not fall within the exclusive jurisdiction under Art. 22(4) of the Lugano Convention; see decision C-288/82 of the ECJ, Ferdinand M.J.J. Duijnstee ./. Ludowijk Goderbauer and further literature in fn 1 of the decision. Under Swiss national law, international jurisdiction for disputes relating to intellectual property rights is governed by Art. 109 CPIL. However, only validity and infringement actions are mentioned, but not assignment actions. Jurisdiction for actions for the assignment of an IP right, in particular a patent, is therefore determined in accordance with the general rule of Art. 2 CPIL, according to which the Swiss judicial or administrative authorities of the defendant’s domicile are competent. As the plaintiff (defendant of the counterclaim) is domiciled in Switzerland, the FPC is also competent for counterclaims relating to the transfer of foreign patents.

  1. Right to accounting

The court re-visited the right to accounting based on Art. 66 lit. b PatA in view of critical voices in the aftermath of O2013_008; see ¶ 58 of the decision (note that fn 33 erroneously refers to O2012_008). However, the decision explicitly confirms the FPC’s practice that in case the court finds infringement there is a substantive entitlement to information and accounting based on Art. 66 lit. b PatA.

  1. Request for accounting with reference to a trademark / product name

As mentioned above, the request for injunctive relief was held inadmissible for lack of concreteness. Still, the court did the whole exercise of infringement analysis. It had to because of the request for accounting. The request for accounting referred to the ‘Mechanical Fountain Pen RMS05’. Such a description would be perfectly inadmissible in a request for injunctive relief, because the product name could be changed at any time. But not so in a request for accounting. The name of a product that has been sold in the past cannot be changed anymore:

However, in the case of conduct that has taken place in the past, it is permissible to specify the allegedly infringing object by means of a type designation or trademark. Such a designation cannot be changed for the past and one therefore knows exactly which product — namely in this case the product previously offered under the designation ‘Mechanical Fountain Pen RMS05’ — is the subject of the information request.

I guess we will see more such simplified requests for accounting in the future.

  1. No mixing-up of functions of features in the test for infringement under the DoE

There is an interesting general remark in ¶ 63 of the decision, i.e.:

One cannot reasonably expand the function of a claim feature and argue that this expanded function is fulfilled by another feature of the attacked embodiment, when the same element (penholder) with the same functionality (can be dismantled to replace the cartridge) is found in the invoked patent in parallel to claimed features, and independently of it (removable endpiece).

Reported by Martin WILMING

IMAGE CREDIT

Header image (Hôtel de Ville de Neuchâtel, Salle du Conseil Général) courtesy of Lucas Vuitel – ArcInfo.

BIBLIOGRAPHY

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine
./.
Swiss Finest SA

Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Philippe DUCOR
  • Christoph MÜLLER
  • Dr. Ralph SCHLOSSER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Nathalie TISSOT (Etude Tissot)
  • Christophe SAAM (P&TS), assisting in patent matters

Representative(s) of Defendant:

  • Christoph KÜNZI (CBK)
  • Tarik KAPIC (Bovard), assisting in patent matters

DECISION IN FULL

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CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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FRÉDÉRIC GARINAUD

Harry Winston Opus 8

Frédéric Garinaud apparently is a master of complicated mechanics. He developed the Harry Winston Opus 8, a manually-wound watch with a ‘digital’ display of the hours and minutes.

The numbers appear only on demand, when a slide on the right side of the watch is activated. I could not help but do some further research on the Opus 8. It was a limited edition of 50 pieces only, on 9 July 2018 seen at luxurybazaar.com with a price tag of US$ 350’125,–. A somewhat fair deal in view of a purported retail price of US$ 449’700,–.

www.luxurybazaar.com; July 9, 2018

Get to know Mr Garinaud in this video, talking about the Opus 8:

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No further grounds for nullity of an SPC beyond Art. 140k of the Patent Act

Case No. O2017_016 ¦ Decision of 12 June 2018 ¦ “Verletzung Ergänzendes Schutzzertifikat; Sevelamer”

Following-up on a decision granting interim injunctive relief (reported here), the present decision in main proceedings now confirms this outcome. I have reported about the hearing in main proceedings on this Blog here.

As indicated earlier, the defendant neither disputed validity of the basic patent EP 0 716 606 B1 of Genzyme Corporation, nor that the subject-matter of the SPC C00716606/01 is covered by the basic patent or that the attacked embodiment (sevelamer carbonate) is covered by the SPC. Rather, the defendant (only) alleged that the SPC is invalid because the office wrongfully granted re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

The FPC now confirms that the list of grounds for nullity of an SPC as set forth in Art. 140k PatA is exhaustive. The alleged wrongful reinstatement is thus no valid ground of nullity. In particular, the decision refers to the dispatch of the Federal Council when the SPCs had been enacted, i.e. the note that Art. 140k is to define the grounds for nullity:

Artikel 140k Nichtigkeit: Absatz 1: Neben dem Erlöschen bzw. der Sistierung des Zertifikats müssen auch die Gründe festgelegt werden, sie seine Nichtigkeit herbeiführen.

CJEU’s logo

Further, the decision reviews the CJEU’s case law and notes that the grounds for nullity according to Art. 15 of the EU SPC Regulation 469/2009 have never been held to be an open list. Rather, the CJEU only interpreted Art. 3, violation of which is referred to as a ground for nullity in Art. 15 of the EU SPC Regulation.

The FPC notes that the defendant could have appealed the decision of reinstatement (Art. 48 ff APA in the version of 09 December 2003), together with the decision of grant of the SPC – but failed to do so. The decision is thus formally final, and the defendant has to live with it.

If there is a take away message for practitioners in this decision, then it is surely to watch out for fresh grants (not only of SPCs, but also patents, trademarks, designs, etc.), to not miss the 30 days(!) time limit for an appeal; Art. 50(1) APA. This will be the only chance to fight against e.g. a wrongful reinstatement — which is more than you will ever get e.g. at the EPO where there is no such chance at all; but still, you need to act quickly.

Yet another interesting aspect of the decision is the assessment of the value in dispute. The parties heavily disagreed. Plaintiffs had considered it to be CHF 5m, while the defendant only estimated it to be CHF 500k. The FPC had thus to decide on this issue, too; Art. 91(2) CPC. Towards this end, it relied on some interesting rules of thumb:

  1. one third of the turnover of the originator’s product is replaced by the generic within about 2 years;
  2. the profit margin of a generic is 50%.

Based on these rules of thumb, and the plaintiffs’ own statement of an annual turnover in Switzerland of CHF 2.25m p.a., the FPC considered the the value in dispute as CHF 750k, for the roughly two years of protection at stake before the SPC will finally lapse in February 2019.

UPDATE 18 July 2018:

The decision has been appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_016 ¦ Decision of 12 June 2018 ¦ “Verletzung Ergänzendes Schutzzertifikat; Sevelamer”

  1. Genzyme Corporation
  2. Sanofi-Aventis (Suisse) SA

./.

Salmon Pharma GmbH

Panel of Judges:

  • Dr. Ralph SCHLOSSER
  • Dr. Tobias BREMI
  • Dr. Stefan KOHLER
  • Dr. Daniel Kraus
  • Dr. Andreas SCHÖLLHORN SAVARY

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Requester:

Representative(s) of Respondent:

  • Dr. Robert BRINER (CMS)

DECISION IN FULL

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BASIC PATENT

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Amlodipine / Valsartan: Controlling blood pressure while assessing obviousness

Case No. S2018_002 | Decision of 07 June 2018 | ‘Abweisung vorsorgliche Massnahme; Fachrichtervotum im parallelen Nichtigkeitsverfahren kein Grund für die Abänderung einer Massnahme; fehlende relative Dringlichkeit’

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

The patent in suit is EP 2 322 174 B1; see EPO Register and Swissreg for further details. It relates to a fixed dose combined unit dose form of two active ingredients for effective control of blood pressure, i.e. amlodipine and valsartan. The former is a dihydropyridine calcium-channel blocker, the latter is an angiotensin II antagonist.

Déjà-vu, you think? Indeed!

A first request for interim injunctive relief had been dismissed with decision of June 1, 2017; see S2017_001. At that time, the claimed subject-matter had been held obvious over Corea in further view of the skilled person’s knowledge. Separately, nullity proceedings had been pending at that time — and they are still pending now; O2016_006. The main hearing is scheduled for August 21, 2018; see here.

What has changed since then is that the patent has been maintained by an Opposition Division of the EPO in first instance at the end of a hearing on December 6-7, 2017. The reasoned decision has been issued on February 8, 2018; see here. Appeal proceedings are still pending at the EPO.

Wind of change?

In the aftermath of the EPO’s first instance decision, the wind has somewhat changed: While the Düsseldorf Regional Court had initially dismissed the request for injunctive relief (decision 4c O 6/17 of April 10, 2017, the Higher Regional Court overturned the decision of the Regional Court and granted interim injunctive relief (decision I - 2 U 18/17 of December 14, 2017), in consideration of the decision of the EPO’s OD. But it is not only that the wind has changed in Düsseldorf from the first to the second instance. Even the judge-rapporteur in both the first summary proceedings and the nullity proceedings at the FPC has changed his mind and gave an expert opinion in parallel nullity proceedings that the claimed subject-matter was non-obvious. The prior art and the arguments on file are still essentially the same, and it remains to be seen how the panel of five judges will actually decide.

In view of the above, Novartis again requested interim injunctive relief. The FPC noted that a second request for interim injunctive relief is possible in general, but only when the circumstances have changed. And even though this is the case here in view of the parallel decisions elsewhere, the FPC still denied the request. It did so because the facts (i.e. the relevant prior art documents) have not changed, but rather only the legal assessment thereof; ¶4.3.

Vorliegend ist […] zu berücksichtigen, dass die von den Klägerinnen genannten Parallelurteile nicht neuen Stand der Technik behandeln, sondern den schon im ersten Massnahmeverfahren bekannten Stand der Technik anders würdigen.

The FPC held that assessment of validity of the patent in suit apparently is a borderline case which requires in-depth assessment in main proceedings; ¶4.4.

Vielmehr bedarf die Klärung der Frage der Rechtsbeständigkeit des Klagepatents einer eingehenderen Prüfung im ordentlichen Verfahren.

Moreover, the FPC held that there was no urgency anymore. A decision in the present summary proceedings could not be expected substantially earlier than a decision in parallel nullity proceedings, if earlier at all.


Further, the FPC noted that Novartis could have well initiated main proceedings for infringement at any time since defendant’s product launch in January 2017, and now has to live with the consequences of not having done so.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2018_002 | Decision of 07 June 2018 | ‘Abweisung vorsorgliche Massnahme; Fachrichtervotum im parallelen Nichtigkeitsverfahren kein Grund für die Abänderung einer Massnahme; fehlende relative Dringlichkeit’

  1. Novartis Pharma AG
  2. Novartis Pharma Schweiz AG

./.

Mepha Pharma AG

Panel of Judges:

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

Reporting Judge:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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PATENT IN SUIT

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Omega ./. Montres Tudor et al. — Finding balance …

Case No. O2015_008 ¦ Decision of 14 March 2018 ¦ ‘Balancier de montre’

Omega logo

We have reported on the background of this case and the main hearing on this Blog here. In brief, infringement of Omega‘s EP 1 837 719 B1 is at stake; see EPO Register and Swissreg for further bibliographic details.

The single independent claim 1 as granted reads as follows:

Balance for a timepiece movement including a felloe (3), arms (4) connecting the felloe (3) to the balance staff and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia, characterized in that the felloe (3) includes studs (7) directed inwards, a threaded hole (9) into which said inertia blocks (11) are screwed from the inside, passing through said felloe (3) and said studs (7).

This is best understood with the figures of the patent at hand:

Tudor logo

The attacked embodiments are Tudor‘s calibres MT5621 and MT5612. Defendants Tudor and Detech denied infringement and countersued for invalidity.

Let’s get to the details now, at least to some extent. The decision is a booklet of 58 pages, and I will thus only comment on what I believe are the most relevant issues of the case.

The requests

Faced with a counterclaim for invalidity, Omega defended the patent substantially as granted as the main request (MR; see the slight amendment in feature #5, below), and with two auxiliary requests (AR1 and AR2) to a more limited extent only. In the feature analysis below, claim 1 according to the MR is structured into features 1-7. Claim 1 according to AR1 comprises features 1-8, and AR2 comprises features 1-9, respectively.

FR EN
1 Balancier pour mouvement d’horlogerie Balance for a timepiece movement
2 comportant une serge (3) including a felloe (3)
3 des bras (4) reliant la serge (3) à l’axe de balancier arms (4) connecting the felloe (3) to the balance staff
4 et des masselottes (11) permettant d’ajuster le balourd et de régler le moment d’inertie and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia
5 caractérisé en ce que la serge (3)  comporte des plots (7) dirigés radialement1 vers l’intérieur characterized in that the felloe (3) includes studs (7) directed radially1 inwards
6 ladite serge (3) et lesdits plots (7) étant traversés par un trou taraudé (9) a threaded hole (9) passing through said felloe (3) and said studs (7)
7 dans lequel lesdites masselottes (11) sont vissées depuis l’intérieur into which said inertia blocks (11) are screwed from the inside
8 les masselottes peuvent être mues indépendamment les unes des autres2 the inertia blocks can be moved independently of each other2
9 le serge présente unse surface externe de diamètre constant sur tout son pourtour3 the felloe has an external surface of constant diameter all around its circumference3

1 Note that ‘radialement’ / ‘radially’ is not included in claim 1 as granted.
2 Additional feature of claim 1 in AR1 vis-à-vis the MR.
3 Additional feature of claim 1 in AR2 vis-à-vis AR1.

Omega’s requests for injunctive relief are adapted accordingly in MR, AR1 and AR2, to conform with the respective requests to maintain the patent. The requests for injunctive relief additionally refer to an illustration of the attacked embodiment that is reproduced below. However, I have amended the reference numbers in accordance with those used in the patent.

Illustration of the claim features included in the requests for injunctive relief

The element marked-up with ‘Δ’ in the above illustration refers to a feature which was not literally fulfilled by the attacked embodiment, but for which infringement under the DoE was alleged, i.e. feature #7 in the table above:

the inertia blocks (11) are screwed [into the threaded hole (9)] from the inside

Rather, the request for injunctive relief read as follows:

les masselottes sont dépourvues de tête et dotées de lobes internes permettant leur vissage depuis l’extérieur de la serge

I.e., in English language:

the inertia blocks are headless and equipped with internal lobes allowing them to be screwed from outside the felloe

Claim construction re feature #7

Now, what does it mean in French that

les masselottes sont vissées depuis l’intérieur?

Does it only require that the inertia blocks can be adjusted from the inside, irrespective of how / from which direction they had been initially placed in the hole, i.e. from the inside or outside of the felloe? Or is it mandatory that the inertia blocks at least could have been placed in the hole from inside of the felloe? Note that EP’719  only discloses inertia blocks with heads (13) that cannot go through the hole, i.e. they must be / have been placed from inside of the felloe; see e.g. ¶[0010].

Anyway, I leave this tricky linguistic question to the francophones to decide for themselves. The decision holds that this feature #7 only requires that the inertia blocks could have been inserted and screwed from the inside during the assembly of the balance wheel (by an access between the serge and the centre of the serge) in the hole traversing the stud and the felloe.

Consequently, feature #7 does not cover inertia blocks which, already present in the tapped holes of the serge and the studs, can be screwed from the inside for the purpose of adjusting the inertia and unbalance, but which would not have previously been inserted and screwed into the corresponding hole from the inside of the felloe.

Novelty

The balance wheel in DE 864 827 comprises a stud (‘plot’) in the sense of feature #5; see the section 1g in the figures below . But since the screws with the inertia blocks have a head on the outside of the felloe, they do not meet the definition of feature #7 as construed above.

Novelty over DE 864 827 was thus acknowledged.

On the other hand, the balance wheel of US 759,914 has inertia blocks must have been placed from the inside; see the screw head on the inner side of the felloe in the figures below.

But what is missing here is the stud (‘plot’) according to feature #5. Thus, novelty was acknowledged over US 759,914.

The balance wheel of US 2,958,997 has some axial screws (21) which are not inertia blocks. On the other hand, it is not possible that the inertia blocks (3) have been placed from the inside since the screw head is outside of the felloe.

US 2,958,997 (Fig. 4)

Features #6 and #7 were not considered anticipated, and novelty was thus acknowledged.

Finally, novelty over the balance wheel ‘Jean Martin’ is discussed, a photograph of which is reproduced in the decision (don’t blame me for the poor quality, it’s in the original):

Balance wheel ‘Jean Martin’

Here, the studs are arranged axially on top of the felloe. The hole thus only passes through the stud, not through the felloe. Features #6 and #7 were not considered anticipated, and novelty was thus acknowledged.

Inventive step

Inventive step has been assessed on the basis of US 759,914 as closest prior art; see figures above. The distinguishing features are #6 and #7, i.e. the studs (which are directed inwards), and the inertia blocks arrangeable in a hole through the stud (and the felloe) from the inside.

Following Omega’s proposal, the objective technical problem has been defined as follows:

Increasing the diameter of a balance wheel without modifying its inertia.

Now, here is the definition of a stud (‘plot’) according to Berner (FR/EN):

Petite pièce métallique, généralement cylindrique qui sert de butée ou qui renforce la partie d’une pièce qui doit recevoir une goupille ou une vis.

Small metal part, usually cylindrical, used as a stop or as a means of strengthening a part that takes a pin or screw.

It is held in the decision that, with this skilled person’s knowledge in mind, it was obvious to arrange studs on the felloe to reinforce the holes. But on which side? On the inside or the outside of the felloe? When placed on the inside, the diameter of the felloe can be larger. Anyway, with reference to T107/02 and T739/08, it is held that a choice from a very limited number of alternatives without an unexpected effect cannot be considered inventive.

The auxiliary requests did not succeed, either. As to AR1, the inertia blocks can be moved independently of each other already in US 759,914. As to AR2, the felloe has an external surface of constant diameter all around its circumference already in US 759,914.

Late request – belated?

Omega had filed yet another, even more limited auxiliary request (AR3) with the response to the expert opinion of the judge-rapporteur. This request was not admitted into the proceedings anymore, with reference to O2015_012. In particular, the decision holds that the expert opinion did not contain new facts or arguments of a technical nature which had not been argued by the parties.

In a nutshell

Omega’s claim for infringement has been rejected, Tudor’s / Detech’s counterclaim for invalidity has been allowed and EP(CH) 1 837 719 B1 declared invalid.

The decision can still be appealed to the Supreme Court.

UPDATE 14 May 2018:

The decision has been appealed to the Supreme Court.

UPDATE 22 October 2018:

The appeal has been dismissed by the Supreme Court (4A_282/2018; reasons not yet available).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_008 ¦ Decision of 14 March 2018 ¦ ‘Balancier de montre’

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Judge(s):

  • Dr. Mark SCHWEIZER
  • Frank SCHNYDER
  • Dr. Tobias BREMI
  • Dr. Philippe DUCOR
  • Christoph MÜLLER

Judge-rapporteur:

  • Frank SCHNYDER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

FULL TEXT DECISION

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Omega ./. Tudor et al.: The aftermath of Baselworld 2015

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega logo

The main hearing in this matter took place earlier today.

See this Blog here for a brief review of the subject-matter at stake, based on the court’s detailed announcement of the hearing.

  1. Background of the case

Infringement of Omega‘s  EP 1 837 719 B1 is at stake; see EPO Register and Swissreg for further bibliographic details.

The single independent claim 1 reads as follows:

Balance for a timepiece movement including a felloe (3), arms (4) connecting the felloe (3) to the balance staff and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia, characterized in that the felloe (3) includes studs (7) directed inwards, a threaded hole (9) into which said inertia blocks (11) are screwed from the inside, passing through said felloe (3) and said studs (7).

This is best understood with Fig. 1 of the patent at hand:

Fig. 1 of the patent in suit

The attacked embodiments are Tudor‘s calibres MT5621 and MT5612; infringement under the Doctrine of Equivalents is alleged. The current versions of the calibres are shown below:

Interestingly, the balance wheels looked a little different when the calibre had been introduced back in 2015 at Baselworld; see here. Do you notice the different balance wheel in the top right of the calibre?

Former promotional material re Tudor’s calibre MT5621

We have found a perspective picture of the old MT5612 balance wheel on the internet here; a similar picture had been shown in the hearing.

When digging a bit deeper, we came across a report in a watch Blog suggesting that the change of the balance wheel had apparently been implemented in view of Omega’s intervention at Baselworld 2015. Indeed, that would be a perfect fit with the case number of the present matter referring back to 2015.

Tudor logo

Now, about three years later, the case surfaces again. Defendants Tudor and Detech deny infringement under the DoE and countersued for invalidity in view of DE 864 827US 759,914US 2,958,997, ROLEX calibres and the common general knowledge of the skilled person.

  1. Learnings from the hearing

Based on what  can be concluded from the pleadings, plaintiff is on the defensive. The expert opinion of the judge-rapporteur had apparently held that the claimed subject-matter (to the extent invoked) was novel, but not inventive. However, the judge-rapporteur had not yet assessed infringement in his expert opinion.

UPDATE Feb 1, 2018:

The first version of this post indicated that the expert opinion of the judge-rapporteur had already addressed infringement. I have been informed by plaintiff’s counsel that this is not the case. Accordingly, this has been corrected in the above. /MW

Most of the discussion was about fulfilment the feature

[…] inertia blocks (11) are screwed into a threaded hole (9) from the inside […].

Evidently, the parties disagree on whether or not this feature is fulfilled in the attacked embodiment(s). Is it sufficient for infringement to be ruled out if the inertia blocks are screwed into the threaded hole from the outside? It remains to bee seen whether fixation from the outside might constitute infringement under the DoE. In particular, plaintiff argued that there was no indication whatsoever in the patent in suit that the direction of fixation was of any relevance. Guess which way the wind is blowing: Pemetrexed.

The final judgment needs to be awaited, to fully understand how the inertia blocks in the attacked embodiments are actually fixed.

The value in dispute is CHF 1M. The parties did not enter into settlement discussions today.

Reported by Jolanda MINDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Judge(s):

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • Dr. Philippe DUCOR
  • Christoph MÜLLER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

PATENT IN SUIT

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It Ain’t Over ’til It’s Over

Case No. O2017_019 ¦ Decision of 21 December 2017 ¦ “Pemetrexed: Abweisung der Feststellungsklage auf Nichtverletzung (Rückweisung O2015_004)”

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.
Lenny Kravitz; (c) Gage Skidmore, CC BY-SA 3.0
“It Ain’t Over ’til It’s Over” (Lenny Kravitz; © Gage Skidmore, CC BY-SA 3.0 license)

Pemetrexed revisited, once again:

As reported earlier on this Blog here, the Supreme Court had remitted the case to the FPC with the order to dismiss the suit with respect to the requested declaratory judgment of non-infringement for the diacid, and to also assess the two other salts that had initially been at stake in first instance proceedings.

Well, the first part is a no-brainer. The FPC is bound to the legal assessment of the Supreme Court, and it thus dismissed the suit with respect to the diacid.

As to the two other salts, i.e. pemetrexed dipotassium and pemetrexed ditromethamine, the FPC briefly assessed infringement under the doctrine of equivalents.

The first question to be answered in the assessment of infringement under the DoE is whether the replaced feature and the replacing feature have the same objective function. The decision holds that it is only the cation that is different, and that the dianion is the same in any event. Further, it is held that both the dipotassium and the ditromethamine salt will be dissociated under physiological conditions, and everything suggests that the mode of action is determined by the dianion.

Pemetrexeddikalium unterscheidet sich von Pemetrexeddinatrium bzw. Pemetrexeddisäure lediglich durch das Kation. Das Dianion ist in allen Fällen identisch. Pemetrexeddikalium liegt bei physiologischem pH dissoziiert in Kation und Dianion vor. Es spricht alles dafür, dass die Wirkungsweise durch das Pemetrexed-Dianion gegeben ist.

Aus diesen Gründen ist eine Gleichwirkung für Pemetrexeddikalium gegeben ist.

One may like or dislike the outcome as it is. Be this as it may. What is troubling me is that this reasoning is only focused on the mode of action of the dianion. Note that the dianion neither is the replaced feature nor the replacing feature. Does this reasoning actually address the first question of the FPC’s questionnaire for the assessment under the DoE at all?

Does the replacing feature objectively fulfil the same function? (‘Gleichwirkung’)

Is there a need to rephrase the first question? Time will show, I guess.

The FPC answered the second and third question in the affirmative, too. It did so by mere reference to the considerations of the Supreme Court.

In sum, all three pemetrexed forms (diacid, dipotassium and ditromethamine) are held to infringe the patent in suit.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_019 ¦ Decision of 21 December 2017 ¦ “Pemetrexed: Abweisung der Feststellungsklage auf Nichtverletzung (Rückweisung O2015_004)”

Actavis Switzerland AG

./.

(1) Eli Lilly and Company
(2) Eli Lilly (Suisse) SA

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Roland DUX
  • Prisca VON BALLMOOS

Judge-rapporteur:

  • Dr. Roland DUX

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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PATENT IN SUIT

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