Supreme Court confirms HeatCut decision, appeal dismissed

Case No. 4A_371/2016 (Supreme Court) ¦ Decision of 14 October 2016 ¦ “HeatCut”

For a review of the FPC’s underlying decision O2014_009 of 04 May 2016, please see this Blog here. In a nutshell, Saurer’s HeatCut system had been held to infringe Lässer’s EP 1 983 083 B1.

The Supreme Court has now dismissed Saurer’s appeal, to the extent it has been considered at all.

First, the appellant apparently aimed at protective measures for the documents to be provided in compliance with the FPC’s order on information and accounting accounting. The Supreme Court did not grant protective measures, in the absence of a specific request towards this end. A procedural — and unspecific — request was not sufficient.

Second, the appellant essentially argued that the injunction as ordered by the FPC reaches beyond the scope of the patent. The Supreme Court did not agree: The injunction requires that the tip only penetrates the layer which is to be cut, and this is well within the scope of the patent.

The appellant also objected to the claim construction and its application on the attacked embodiment. Both objections were held unfounded, to the extent considered at all.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_371/2016 (Supreme Court) ¦ Decision of 14 October 2016 ¦ “HeatCut”

Saurer AG (appellant) ./. Lässer AG Stickmaschinen (patentee)

Composition of the Board of the Supreme Court:

  • Dr. Christina KISS
  • Dr. Kathrin KLETT
  • Dr. Martha NIQUILLE

Court Clerk:

  • Dr. Christoph HURNI

Representative(s) of appellant:

Representative(s) of patentee:

DECISION IN FULL

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Doctrine of Equivalents: It’s not only about asking the right questions

Case No. 4A_131/2016 (Supreme Court) ¦ Decision of 03 October 2016 ¦ “Urinalventil”

Little time? Read the summary.

I have reported on the main hearing before the FPC on this Blog here. For a brief review of the underlying decision O2014_002 of the FPC, see this Blog here.

boy-214906_960_720Long awaited, now here it is: The first decision of the Supreme Court on the Doctrine of Equivalents since ages; see fulltext below. You hoped for a ready-mix for assessment of equivalency? I’m sorry, there is none.

But let’s have a look at the very basic facts first.

The patent in suit is EP 1 579 133 B1 (embedded below), and it’s all about a non-return valve for a urinal. The independent claim reads as follows (mark-up added):

A non-return valve (3), comprising an inlet section (5) in the form of a self-supporting trough-shaped section and an outlet section, the outlet section being made of a flexible resilient material connected to the inlet section (5), whereby the outlet section comprises a flat flexible resilient strip (6) with a high inherent degree of flexibility, the strip (6) being connected with the inlet section (5) at its upper edge; and further comprising a component that is separate from the strip (6) providing a complementary surface against which the lower end of the flexible strip (6) may seal.

The technology is not difficult to understand: The strip (6) and the ‘component with a complementary surface’ — actually, yet another strip — are arranged in a way as to allow fluid passing through the valve in the one direction of the valve. The valve closes when the fluid has passed, to prevent unpleasant odor from rising up. Flattened tubes instead of separate strips had been known in the prior art for the same purpose; see D1, US 3 835 857).

LITERAL INFRINGEMENT

The million dollar word is “separate”. What does the feature

[…] a component that is separate from the strip (6) providing a complementary surface against which the lower end of the flexible strip (6) may seal

actually mean? There is no explicit definition of “separate” in the patent. Actually, the word as such was not even used in the application as filed at all. It had been introduced during prosecution, based on the overall specification and figures which all show (completely) separate strips; see figures 1 and 2, above.

On the other hand, the two strips are interconnected by lateral connectors in the attacked embodiment. Noteworthy, this configuration is protected by EP 2 553 299 B1 of the defendant (embedded below; EP’299 explicitly acknowledges the patent in suit as closest prior art in para. [0003]-[0005]).

attacked embodiment
attacked embodiment

The assessment of the Supreme Court is straight forward — and in line with the decision of the FPC. In light of the figures, the description and in differentiation over the prior art (flattened tube) the feature is construed to imply a full-length separation. The Supreme Court explicitly holds that the embodiment with loose ends is not merely a preferred embodiment:

Die Ausführungsbeispiele weisen auf dieses Verständnis eindeutig hin, ohne dass Anhaltspunkte für ein weiteres Verständnis von ‘separate’ in dem Sinne bestehen würden, dass das Ausführungsbeispiel mit den losen Enden nur als eine – wie die Beschwerdeführerin behauptet, bevorzugte – Ausführung erschiene.

Thus, no literal infringement.

INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS

Almost no decision on equivalency is uncontroversial, and people mostly have a very firm opinion pro or contra infringement under the Doctrine of Equivalents. So do I. But I feel there are plausible arguments for both views in the present matter, and I won’t take position for either side. No use crying over spilt milk anyway; this case has been finally decided now.

But let’s have a closer look at what can be learned about how the Supreme Court nowadays assesses infringement under the Doctrine of Equivalents on the basis of the three-step questionnaire as defined by the FPC (see S2013_001).

THE FIRST QUESTION

Do the replaced features have the same objective function? (same effect / “Gleichwirkung”)

Erfüllen die ersetzten Merkmale [Austauschmerkmale] die objektiv gleiche Funktion? (Gleichwirkung)

First of all, what is the replacing feature? The Supreme Court identifies the replacing feature essentially as follows:

[…] component and the strip (6) are separate for a sufficient length to allow for a sealing effect when a fluid has passed.

The first question is a no-brainer here: Fulfilment of the same function has been beyond dispute.

THE SECOND QUESTION

Are the replaced features and their same objective function made obvious to the skilled person by the teaching of the patent? (accessibility / “Auffindbarkeit”)

Werden die ersetzten Merkmale [Austauschmerkmale] und deren objektiv gleiche Funktion dem Fachmann durch die Lehre des Patentes nahe gelegt? (Auffindbarkeit)

This question had unfortunately been left undecided by the FPC (since the third question was answered in the negative). Nevertheless, the FPC had clarified in the headnote of the underlying decision how it expects this question to be addressed; see this Blog here. This hn reads as follows:

The assessment of accessibility is not to be confused with the assessment of inventiveness. Starting point for the assessment of accessibility is not the general state of the art, but the patent in suit. Therefore it is not to be assessed whether the replaced feature is inventive in view of the state of the art. It is rather to be assessed whether, starting from the teaching of the patent in suit, it is evident for the skilled person that the replaced feature has the same effect (r. 6.5.2.4).
(Clarification of the case law with respect to S2013_001, decision dated 21. März 2013)

The reasons 6.5.2.4 referred to in the hn read as follows:

It is to be determined whether, once the features are replaced, the same effect is evident for the person of skill in the art when objectively assessed in consideration of the teaching of the patent.

Zu beurteilen ist, ob, wenn die Merkmale ausgetauscht sind, die Gleichwirkung für den Fachmann bei objektiver Betrachtung unter Berücksichtigung der Lehre des Patents offensichtlich ist.

According to the hn in light of the reasons, this test compares two already given situations (one with the replaced/claimed feature and another one with the replacing feature) and only then asks whether the same effect is evident. As I have outlined earlier, this really makes a big difference.

Now, this is what the Supreme Court asked (mark-up added):

[…], whether the skilled person who intends to add a fixation at the lower end of the strips instead of the loose ends will readily understand that the strips have to be separate at a length which is sufficient to achieve the effect which the patent intends to achieve.

[…], ob der Fachmann, der statt der losen Enden der Streifen am unteren Ende der Streifen eine Befestigung anbringen will, ohne weiteres erkennt, dass die Streifen auf einer hinreichenden Länge getrennt werden müssen, um die mit dem Patent angestrebte Wirkung zu erreichen.

I don’t think that this is what the FPC had in mind when drafting the hn and r. 6.5.2.4. In the assessment of the FPC, there is no need at all for a skilled person intending to add a fixation. The skilled person rather only compares two given scenarios, i.e. the claimed solution and the attacked embodiment. If the same effect of these two embodiments is evident, the question is to be answered in the affirmative. Else, it’s not. Frankly speaking, I just cannot say whether the Supreme Court is supportive of this approach or not.

THE THIRD QUESTION

With due consideration of the wording of the claim in the light of the description, would the skilled person have considered the replacing features as a solution of equal value? (equal value / “Gleichwertigkeit”)

Hätte der Fachmann bei Orientierung am Anspruchswortlaut im Lichte der Beschreibung die ersetzten Merkmale [Austauschmerkmale] als gleichwertige Lösung in Betracht gezogen? (Gleichwertigkeit)

Assessment of this question by the Supreme Court in r. 6.3.2 starts with a summary of what the FPC had held, i.e. that the skilled person would not have considered the replacing features as an equivalent solution, with due consideration of the claim. Really? Is that it? I feel the FPC did more than that — and there is more to do according to the wording of the third question recited above, i.e. to give due consideration to the claim wording in view of the description. And it had been the description and the figures which strictly limited the term “separate” to only cover loose ends. Consequently, the FPC had discussed the actual meaning of the claim wording (see section 6.5.2.5 of the underlying decision O2014_002):

Thus, it is not apparent for the skilled person in view of the claim construction that the claimed subject-matter (separately) could equivalently be replaced with a modification of this feature (lateral connectors).

So ist in diesem Fall für den Fachmann bei Orientierung am ausgelegten Anspruchswortlaut auch nicht erkennbar, dass die anspruchsgemässe Lehre (separat) mit einer Abwandlung des betroffenen Merkmals (Verbindungsstege) gleichwertig realisiert werden kann.

From the decision as such, it is not clear to me whether (or to which extent) the Supreme Court has paid attention to the description when answering the third question. The meaning of “separate” is interpreted more broadly again, based only on the wording of the claim as such:

Actually, a complete separation […] with loose ends is not required by the wording of the claim as such.

Eine vollständige Trennung […] mit losen Enden wird vom Anspruchswortlaut für sich genommen gerade nicht verlangt.

If that was indeed the case, then why is there no literal infringement?

The Supreme Court finally holds:

Thus, the loose end of the strips can equally be replaced by a fixation.

Danach lässt sich das lose Ende der Streifen gleichwertig durch eine Befestigung ersetzen.

In my perception, the great achievement of the third question reaches far beyond that. It had been intended to be all about providing a reasonable degree of legal certainty for third parties, i.e. to reasonably confine the potential scope under the Doctrine of Equivalents. Therefore, it essentially asks whether the skilled person would really have considered the replacing feature as an equivalent, with due consideration of the claim and the description — not merely whether it objectively is an equivalent replacement.

The Supreme Court notes in passing that the attacked embodiment has been patented (explicitly over the patent in suit as prior art), but holds that this does not change the fact that it still makes use of the patent in suit. The bottom line of the decision is a reference to a famous Swiss legal scholar:

Subsequent inventions are directly covered by the scope of the prior teaching if this prior teaching is fully embodied while providing for an improved, non-obvious variant; and inventions which make use of the core of the inventions that has been patented earlier (ALOIS TROLLER, Immaterialgüterrecht, Bd. II, 3. Aufl. 1985, S. 891). Art. 36(1) PatA provides for a non-exclusive license in such cases (cf decision 4C.502/1997 of April 20, 1998, r. 5b).

Vom Schutzbereich der älteren Lehre direkt umfasst sind spätere Erfindungen, wenn sie die ältere Lehre vollständig anwenden, aber eine verbesserte, nicht naheliegende Ausführung lehren, und ebenso Erfindungen, bei deren Anwendung der Kern der früher patentierten Erfindung mitverwendet wird (ALOIS TROLLER, Immaterialgüterrecht, Bd. II, 3. Aufl. 1985, S. 891). Dafür sieht Art. 36 Abs. 1 PatG eine nicht ausschliessliche Lizenz vor (vgl. Urteil 4C.502/1997 vom 20. April 1998 E. 5b).

Reference to Art. 36(1) PatA looks like an easy way out, but the right to be granted a non-exclusive license is explicitly only given by law if the invention represents an important technical advance of considerable economic significance in relation to the invention that is the subject-matter of the prior patent. It will not necessarily be easy to meet this precondition.

I hope we will see further decisions of the Supreme Court in the near future which provide some more guidance on the actual interpretation of the second question and how the reasonable degree of legal certainty for third parties is to be safeguarded when answering the third question. Addressing infringement under the Doctrine of Equivalents with a set of three questions that somehow resemble the questionnaires used in the U.K. and Germany surely is an achievement of harmonization. But I do not yet see much harmony in how the questions are interpreted and answered.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_131/2016 (Supreme Court) ¦ Decision of 03 October 2016 ¦ “Urinalventil”

Daspaco AG ./. Von Allmen AG

Composition of the Board of the Supreme Court:

  • Dr. Christina KISS
  • Dr. Kathrin KLETT
  • Dr. Gilbert KOLLY
  • Dr. Fabienne HOHL
  • Dr. Martha NIQUILLE

Court Clerk:

  •  Dr. Christoph HURNI

Representative(s) of Appellant / Patentee:

Representative(s) of Defendant:

DECISION IN FULL

Download (PDF, 694KB)

PATENT IN SUIT

Download (PDF, 303KB)

DEFENDANT’S PATENT

Download (PDF, 437KB)

SUMMARY

The good news from the first decision of the Supreme Court on the Doctrine of Equivalents since ages: The third question of the FPC’s questionnaire is approved. The sad news: There is little to no guidance in the decision with respect to how the second and the third question are to be interpreted. In particular, it still remains unclear how the reasonable degree of legal certainty for third parties is to be safeguarded when answering the third question.

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Dolce Gusto® patent not infringed

Case No. S2016_002 ¦ Decision of 06 October 2016 ¦ “Vorsorgliche Massnahme; Glaubhaftmachung Verletzung”

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

For a brief review of the background at stake, please see the report on the main hearing of 01 September 2016.

Nestlé alleged that Delizio‘s Twïn® capsules infringe EP 1 472 156 B1, i.e. the combination of claims 1, 3 and 9. The feature analysis referred to in the decision accordingly reads as follows:

1.a   Capsule designed to be extracted by injection of a fluid under pressure in an extraction device, containing a substance for the preparation of a beverage,

1.b   comprising a closed chamber containing the said substance

1.c   and a means allowing the said capsule to be opened at the time of its use and for allowing the said beverage to flow out,

1.d   characterized in that opening is achieved by relative engagement of the opening means with a retaining wall of the closed chamber

1.e   and in that the relative engagement is performed under the effect of the rise in pressure of the fluid in the chamber.

3.f   Capsule according to Claim 1, characterized in that the opening means (28, 32, 41, 48, 64, 71, 73, 74, 80, 81, 82, 84, 85, 86, 93, 94) is housed outside the closed chamber

3.g   and in that the retaining wall (29, 33, 40, 45, 72, 92) is moved under the effect of the rise in pressure against the opening means.

9.h   Capsule according to Claim 3, characterized in that it comprises a cup (66) with a rim

9.i   and a bottom having an opening for the outflow of the beverage

9.j   and a membrane (67) welded to the periphery of the rim of the said cup

9.k   and in that the means allowing opening comprises recessed and raised elements (73, 74) forming the bottom of the said cup

9.l   covered by a thin film (72), this thin film tearing on the raised and recessed elements at the time of extraction.

The interim assessment of the reporting judge held that this combination of features is not infringed by the Twïn® capsules. The court essentially consented with the reporting judge and dismissed the request for interim injunctive relief. Claim construction of features 1.c, 1.d, 1.e, 3.f, 3.g, 9.k and 9.l was key. With reference to the recent Pemetrexed decision of the German Federal Supreme Court, the FPC took the technical problem into consideration from the very beginning:

Das Gericht darf sich in den Gründen der Entscheidung mit dem technischen Problem nicht erst dann befassen, wenn es den Patentanspruch ausgelegt hat. Bestimmung der Aufgabe und Auslegung des Patentanspruchs stehen vielmehr in einer gewissen Wechselwirkung. In der Regel ist es dementsprechend zweckmässig und geboten, vorab Überlegungen zum technischen Problem anzustellen. Im Rahmen der Auslegung sind nämlich sowohl der Sinngehalt des Patentanspruchs in seiner Gesamtheit als auch der Beitrag, den die einzelnen Merkmale zum Leistungsergebnis der Erfindung liefern, zu bestimmen. [BGH, 14.06.2016 – XZR 29/15, Rn. 14]

The decision also clarifies how references to pictures in a request for injunctive relief are to be understood. A request reciting specific features ‘with reference to’ pictures (“unter Bezugnahme auf”) is not limited to the exact embodiment shown in the pictures. However, the wording ‘according to’ (“entsprechend”) actually is limiting.

[D]ie Angabe, dass die Kapseln unter Bezugnahme auf die Fotografien in Anhang A […] Merkmale aufweisen würden, ist nicht einschränkend. Die Fotos dienen lediglich dem einfacheren Verständnis des Rechtsbegehrens 1.

Das Eventualbegehren 1a schränkt die aufgeführten Elemente zusätzlich mit den Fotografien der zu verbietenden Kapsel ein, […].

Compensation for legal representation (CHF 40’000,–) was awarded based on the value in dispute of CHF 1m and according to the tariff; see CostR-PatC. Expenses for involvement of the patent attorney was adjusted accordingly to CHF 40’000,–, in line with the recent decision O2012_043.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2016_002 ¦ Decision of 06 October 2016 ¦ “Vorsorgliche Massnahme; Glaubhaftmachung Verletzung”

Société des Produits Nestlé S.A.

./.

(1) Migros-Genossenschafts-Bund
(2) Delica AG
(3) Total Capsule Solutions SA

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Kurt STOCKER
  • Dr. Herbert LAEDERACH

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of plaintiff:

Representative(s) of defendant:

DECISION IN FULL

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Supreme Court decision on Doctrine of Equivalents

Case No. 4A_131/2016 (Supreme Court) ¦ Decision of 03 October 2016 ¦ “Urinalventil”

For a brief review of the underlying decision O2014_002 of the FPC, see this Blog here. The decision of the Supreme Court has been published today.

An important take-away message is: The third question (which has been applied by the FPC for the first time in S2013_001, somewhat similar to Schneidmesser in Germany and Improver in the UK) has now been approved by the Supreme Court. Welcome!

With due consideration of the claim wording in view of the description: Would the person skilled in the art have taken the replacing features into account as being an equivalent solution? (“Gleichwertigkeit”)

On the merits of the case, the Supreme Court overruled the FPC’s decision on equivalence. It will take me a few days to digest the decision and to put it into perspective. Asking three questions is a first step; the devil surely is in the detail of the answers. Stay tuned.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_131/2016 (Supreme Court) ¦ Decision of 03 October 2016 ¦ “Urinalventil”

Daspaco AG ./. Von Allmen AG

Composition of the Board of the Supreme Court:

  • Dr. Christina KISS
  • Dr. Kathrin KLETT
  • Dr. Gilbert KOLLY
  • Dr. Fabienne HOHL
  • Dr. Martha NIQUILLE

Court Clerk:

  •  Dr. Christoph HURNI

Representative(s) of Appellant / Patentee:

Representative(s) of Defendant:

DECISION IN FULL

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Bosch ./. Swiss Confederation

Case No. O2012_021 ¦ Main hearing of 23 September 2016

The file number says it all: It’s a quite old case — but a highly interesting one. It pertains to the performance-related heavy vehicle fee (HVF) levied in Switzerland.

The Robert Bosch LLC of Germany (plaintiff) is patentee of EP 0 741 373 B1, entitled “System for detecting the distance travelled by a vehicle in a given area”. Stakes are high: A compensation of more than CHF 60m has been claimed initially, for an alleged infringement of EP’373.

The plaintiff had partially surrendered the patent in February 2011 by limitation of claim 1 with yet another feature taken from the description, in accordance with Art. 24 lit. c PatA. The limited patent is published as CH/EP 741 373 H1. The only independent claim 1 now reads as follows (amendments over EP’373 marked-up):

System for detecting the distance travelled by a vehicle in a predefined area for the purpose of charging tolls, having the following features:

a vehicle device (FG) with which the distance travelled is continuously measured independently of the respective location is provided in the vehicle,

the vehicle device (FG) comprises an interface to a trip recorder (F);

fixed stations (ASE, ASA) which have means for receiving data emitted by a vehicle device (FG) are provided at least at the entries to the predefined area and the exits from the predefined area,

the vehicle device (FG) has means for transmitting data which communicate the current kilometre reading and a uniquely defined identification number to a fixed station (ASE, ASA) to be passed,

a control centre (Z) to which the fixed stations (ASE, ASA) forward the received data together with information on entry into or exit from the predefined area in order to charge tolls is provided.

Representative illustrations from EP’373:

In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement at the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable. Thus, a first decision has been issued on 07 June 2012; see this Blog here. In a nutshell, the FPC had decided to consider the case as the competent court, for both infringement and damages.

The fulltext decision is embedded below, for avid readers:

Download (PDF, 126KB)

The Supreme Court had a second look at it; see this Blog here. With decision of 05 February 2013 it confirmed that the Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA). But the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.

Here is the fulltext of the Supreme Court’s decision:

Download (PDF, 170KB)

Long time no see: Nothing surfaced since then. Meanwhile, about 3.5 years(!) after the Supreme Court’s decision on competency, the patent has already lapsed on 19 April 2016 (see Swissreg for details). I had assumed the case had settled. Oh, how mistaken I was!

THE MAIN HEARING

The defendant apparently had lodged a nullity suit in reply. It was evident from the pleadings that the interim assessment of the reporting judge did not at all expand on the question of infringement. Instead, the reporting judge (only) held that the patent is not valid for lack of an inventive step, using the problem-and-solution approach. Both parties discussed EP 517 082 A2 as closest prior art.

The plaintiff apparently requested that the patent be maintained in amended form, essentially as follows:

First, on the basis of the claim according to CH/EP 741 373 H1, but with the further limitation that the vehicle device (FG) comprises an interface to the pulse output of a trip recorder (F).

Second, with additional features specifying a bi-directional radio communication of vehicle device (FG) and fixed stations in the frequency range of 5,795 to 5,815 GHz; and that the fixed stations at the entries and exits perform a functional test of the operability of the vehicle device (FG).

Third, with the additional feature that the bi-directional radio communication is carried out by the fixed stations.

Since the patent has lapsed in the meantime, injunctive relief was not an issue anymore. Instead, the plaintiff now requests a declaratory judgement that the patent (as amended) had been infringed. There was also no need anymore for issuance of a compulsory license and/or for a reasonable transition period; the defendant has withdrawn these requests.

The parties also discussed whether the plaintiff’s requests for declaratory judgement were specific enough; whether the plaintiff’s amendments of the claim were admissible after closure of the file; and, finally, the value in dispute which is far beyond the tariff in any event. The plaintiff estimated the value in dispute to CHF 15.5m. On the other hand, the defendant estimated at least CHF 77.5m (according to the initially claimed damages, incl. interest). As noted above, the FPC will not decide on damages. But the value in dispute will of course be relevant for the compensation of the successful party.

The parties finally entered into non-public settlement discussions.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_021 ¦ Main hearing of 23 September 2016

Robert Bosch GmbH

./.

Swiss Confederation (represented by the Federal Department of Finance)

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Daniel VOGEL
  • Dr. Christoph GASSER
  • Dr. Christoph WILLI
  • Dr. Markus A. MÜLLER

Reporting judge:

  • Daniel VOGEL

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

PATENT IN SUIT

EP 741 373 B1:

Download (PDF, 434KB)

CH/EP 741 373 H1:

Download (PDF, 140KB)

NOTES FROM THE HEARING

These updates are not sent out of the courtroom; there is no network connection anyhow. I use the breaks instead, and the time shortly before and after the hearing.

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Coffee break is over: A new frontier in coffee capsule litigation

Case No. S2016_002 ¦ Main hearing of 01 September 2016

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendants.
 
nescafe_dolce_gusto_logo
Logo (© Nestlé)

The plaintiff in this infringement case is Nestlé. It’s all about coffee capsules again. But the Nespresso® system is not concerned this time: Capsules compatible with Nestlé’s Nescafé® Dolce Gusto® system are at stake.

The attacked embodiment is Delica’s Twïn® system that has been introduced on the market in Switzerland in February 2016. A similar system is marketed elsewhere as Café Royal. The Twïn® capsules are compatible with Nescafé® Dolce Gusto® machines, and both systems directly compete in supermarkets. Nestlé now seeks injunctive relief in summary proceedings.

Unlike the Nespresso® system, both the Dolce Gusto® and the Twïn® system enable the customer to draft e.g. a latte macchiato from capsules:

 

Nestlé alleges infringement of EP 1 472 156 B1, i.e. the combination of claims 1, 3 and 9. The relevant claims read as follows:

1.   Capsule designed to be extracted by injection of a fluid under pressure in an extraction device, containing a substance for the preparation of a beverage, comprising a closed chamber containing the said substance and a means allowing the said capsule to be opened at the time of its use and for allowing the said beverage to flow out, characterized in that opening is achieved by relative engagement of the opening means with a retaining wall of the closed chamber and in that the relative engagement is performed under the effect of the rise in pressure of the fluid in the chamber.

3.   Capsule according to Claim 1, characterized in that the opening means (28, 32, 41, 48, 64, 71, 73, 74, 80, 81, 82, 84, 85, 86, 93, 94) is housed outside the closed chamber and in that the retaining wall (29, 33, 40, 45, 72, 92) is moved under the effect of the rise in pressure against the opening means.

9.   Capsule according to Claim 3, characterized in that it comprises a cup (66) with a rim and a bottom having an opening for the outflow of the beverage and a membrane (67) welded to the periphery of the rim of the said cup and in that the means allowing opening comprises recessed and raised elements (73, 74) forming the bottom of the said cup covered by a thin film (72), this thin film tearing on the raised and recessed elements at the time of extraction.

The animated explanation on the Dolce Gusto® website is helpful to understand how the capsule actually works.

The interim assessment of the reporting judge held that this combination of features is not infringed by the Twïn® capsules, mainly in view of differences with respect to the opening means (including the function thereof and its interaction with the thin film to be opened). The defendant additionally argued for non-fulfilment of the two underlined features of the claims recited above.

In order to rebut the interim assessment of the reporting judge the plaintiff had commissioned a second opinion from an IP law firm. The plaintiff emphasized that this firm had assessed the matter completely independently. Right from the outset, the President left no doubt about the fact that this opinion is nothing but a party opinion. In addition, the defendant noted that this firm is regularly involved in disputes against Migros (or connected undertakings) on behalf of counterparties.

Nestlé refused to enter into settlement negotiations.

Reported by Oliver JEKER and Martin WILMING

BIBLIOGRAPHY

Case No. S2016_002 ¦ Main hearing of 01 September 2016

Société des Produits Nestlé S.A.

./.

(1) Migros-Genossenschafts-Bund
(2) Delica AG
(3) Total Capsule Solutions SA

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Kurt STOCKER
  • Dr. Herbert LAEDERACH

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of plaintiff:

  • Dr. Andri HESS (Homburger)
  • Dr. Kurt SUTTER (Blum), assisting in patent matters

Representative(s) of defendant:

PATENT IN SUIT

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The first decision of the FPC on international patent exhaustion

Case No. S2016_006 ¦ Decision of 14 July 2016 ¦ “Geräuscharmer Turbolader: Abweisung Massnahmebegehren; ungenügende Substantiierung einer Patentverletzung; Erschöpfung gemäss Art. 9a Abs. 4 PatG eingetreten”

Hyundai_Motor_Company_logo.svgPrice differentiation for various markets is a common phenomenon, for a broad range of products. Continue reading “The first decision of the FPC on international patent exhaustion”

ECC’s suit against Nestlé Nespresso, DKB and Eugster/Frismag dismissed

Case No. O2015_001 ¦ Decision of 12 July 2016 ¦ “Rejet; dispositifs ne reproduisent pas les conclusions”

As reported earlier on this Blog here, Ethical Coffee Company (ECC) had sued Nestlé Nespresso SA for patent infringement in early 2015; please see the report on the main hearing of 15 June 2016 on this Blog here for a review of the technical issues at stake.

The patent in suit is CH 701 971 B1; see Swissreg for further details. The only independent claim 1 of CH’971 reads as follows (emphasis added):

Dispositif pour la préparation d’une boisson extraite à partir d’une capsule (1) comprenant un support de capsule (4) et une cage a capsule (5) a l’intérieur de laquelle sont disposés au moins une entrée d’eau et des moyens de perçage de capsule, caractérise par le fait que ladite cage (5) est agencée de manière à déformer au moins partiellement toute capsule (1) constituée d’un matériau déformable au contact d’eau chaude, qui est disposée dans la cage (5), de manière à ce que la capsule (1) soit retenue dans la cage (5) consécutivement à son contact avec de l’eau chaude.

Structured according to the defendants’ feature analysis and (inofficially) translated into English:

M1: Device for preparing a drink extracted from a capsule (1)

M2: comprising a capsule support (4)

M3: and a capsule cage (5)

M4: inside which there are at least a water inlet and capsule-piercing means

M5: characterized in that said cage (5) is arranged in such a way as to deform, at least partially, any capsule (1), made of a material that can be deformed upon contact with hot water, which is placed in the cage (5)

M6: so that the capsule (1) is retained in the cage (5) following its contact with hot water.

In a nutshell, ECC claimed CH’971 is a patent for the technology it alleges Nestlé Nespresso uses to block its capsules, and there has been quite a hustle and bustle in the press beforehand — but the suit has been flatly dismissed. It took the FPC only less than 5 pages on the merits to come to this conclusion.

For injunctive relief to be granted, it is necessary that three criteria are met (see S2012_003, r 14):

(a) the request contains a detailed description of the attacked embodiment;

(b) the defendant actually uses this attacked embodiment; and

(c) this attacked embodiment is covered by the scope of the patent, either literally or under the doctrine of equivalents.

As to (a), i.e. the mere wording of the request, it is established case law that an admissible request must contain a detailed description of the incriminated act; see the decision 131 III 70 of the Supreme Court and decision O2012_033 of the FPC. This description must be so specific that a purely factual examination is enough to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous technical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements. This was held to be the case here — notably also for the ‘million dollar phrase’ highlighted in the claim above which is literally recited in the request for injunctive relief. The FPC held that the phrase ‘toute capsule’ / ‘any capsule’ means (literally) any capsule that is suitable for use in the machines to prepare coffee, irrespective of whether or not the capsule is retained in the machine thereafter.

[…] l’expression «toute capsule» signifie dans le présent contexte toute capsule susceptible d’être utilisée dans le dispositif (machine à café) en question, de façon à permettre la préparation d’une boisson extraite (un café), ceci indépendamment de la question de savoir si une telle capsule est retenue dans la cage après l’extraction.

Thus, the FPC held that criterion (a) was properly met. However, this understanding of the phrase ‘toute capsule’ / ‘any capsule’ has been decisive for failure at the next bar (b), i.e. the test whether the defendant actually uses this attacked embodiment. Apparently, the plaintiff had admitted that ECC’s modified capsules were not retained in the attacked devices. Likewise, the defendant had submitted that not all capsules are retained in the attacked devices. Concluding, the FPC held that the attacked embodiments evidently did not retain ‘toute capsule’ / ‘any capsule’. The FPC did not see any room for interpretation of this phrase in the request, deviating from the ordinary meaning. If the plaintiff intended to give it a different meaning, it should have been explicitly recited in the request.

Il n’y a pas lieu d’interpréter les conclusions. Si la demanderesse entend conférer à une expression contenue dans les conclusions une signification différente que son sens ordinaire, ou si elle souhaite lui donner un sens moins étroit que sa signification ordinaire, alors elle doit le formuler de manière expresse dans la conclusion.

The FPC thus dismissed the suit already for this reason. For the sake of completeness, the FPC also briefly expanded on criterion (c), i.e. whether the attacked embodiment (and the request for injunctive relief) is covered by the scope of the patent. Note that the request did not at all refer to M1, M2 and M4. The request thus reached beyond the scope of protection conferred by the patent and the suit had to be dismissed for this reason, too. In passing, the FPC also questioned how the feature of at least a water inlet and capsule-piercing means inside the cage (5) should be realized at all; see feature M4.

The value in dispute had been fixed at CHF 3m; court fees amounted to CHF 100’000,– in accordance with Art. 1(1) CostR-PatC. Party compensation for legal representation was fixed to CHF 100’000,–, in accordance with the tariff; Art. 5 CostR-PatC (actual expenses of the defendants had been significantly higher, i.e. CHF 333’608,20).

It will be interesting to see decisions in other countries on this issue; please find the details on co-pending litigation elsewhere on this Blog here.

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case No. O2015_001 ¦ Decision of 12 July 2016 ¦ “Rejet; dispositifs ne reproduisent pas les conclusions”

Ethical Coffee Company SA

./.

Nestlé Nespresso SA
DKB Household Switzerland AG
Eugster/Frismag AG

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Daniel KRAUS
  • Dr. Herbert LAEDERACH
  • Kurt STOCKER

Reporting Judge:

  • Dr. Tobias BREMI
    (no interim assessment was established)

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

FULLTEXT OF THE DECISION

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Bombardier ./. Stadler: Infringement action dismissed, patent held invalid

Case No. O2012_043 ¦ Decision of 10 June 2016 ¦ “Antriebseinrichtung für Schienenfahrzeug: Zugänglichmachung Öffentlichkeit; notwendige Auslage Patentanwalt”

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

Plaintiff in this infringement action is Bombardier Transportation. The defendants of the Stadler group of companies essentially argued for nullity as a plea in defense and alleged a prior user right; Art. 35 PatA. The patent in suit is EP 1 963 157 B1 (see EPO Register and Swissreg for bibliographic details). For further details on the background of the case and the actual subject-matter at stake, please see the report on the main hearing on this Blog here.

In a nutshell, EP’157 concerns the pairwise arrangement of transformer units and power converter units at the wheel units of a train:

The only independent claim 1 reads as follows:

Rail vehicle with a body (102) which is supported on a first wheel unit (103.1) and a second wheel unit (103.2) located a distance away in the longitudinal direction of the body (102), and an electrical drive device (104), which drives the first wheel unit (103.1) and the second wheel unit (103.2), wherein the drive device (104) comprises at least one first transformer unit (105.1) and a first power converter unit (106.1) allocated to it, which are arranged in the body (102), characterised in that the first transformer unit (105.1) and the first power converter unit (106.1) are arranged in the area of the first wheel unit (103.1) and drive the first wheel unit (103.1), and the drive device (104) comprises a second transformer unit (105.2) and a second power converter unit (106.2) allocated to it, which are arranged in the area of the second wheel unit (103.2) and drive the second wheel unit (103.2).

The interim assessment of the reporting judge already held that EP’157 is not novel over documents (compiled here from the EPO online file-wrapper) that had been submitted from ABB to both Siemens and Stadler in parallel. This was confirmed in the present decision. Actually, neither the contents nor the actual exchange of the documents by Email was under dispute, but rather only whether or not the respective exchange of documents had occured under implicit confidentiality or not. The FPC held that implicit confidentiality must not be assumed with levity; it is instead to be considered as an exception which has to unfold from the actual circumstances beyond any doubt:

Eine solche implizite Geheimhaltung ist jedoch nicht leichtfertig anzunehmen, sondern ist vielmehr als Ausnahme zu betrachten und muss sich entsprechend zweifelsfrei aus den Umständen ergeben.

This was not the case here: The documents had been sent by ABB to both Siemens and Stadler in parallel, in an informal reply to a request for an offer from Siemens. The mere fact that ABB deliberately distributed the documents not only to Siemens but also to yet another third party (the defendant) made clear that ABB had no interest in any confidentiality.

The alleged prior user right had been acknowledged in the interim assessment (Art. 35 PatA), but could be left undecided in view of the lack of novelty of the patent in suit.

A compensation of CHF 70’000,– was awarded for professional legal representation, strictly according to the tariff and based on a value in dispute of CHF 1m; Art. 5 CostR-PatC. But the refund of ‘necessary expenses’ for a patent attorney under Art. 3 lit. a CostR-PatC was another interesting aspect of the decision. There is no tariff for such ‘necessary expenses’. The FPC finally awarded CHF 90’000,– and accordingly held that ‘necessary expenses’ may well be within the same order of magnitude of the costs for legal representation:

Dabei erscheint es angemessen, den Maximalbetrag, der dafür im Verfahren geltend gemacht werden kann, von der Grössenordnung her im Bereich der rechtsanwaltlichen Entschädigung anzusiedeln.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_043 ¦ Decision of 10 June 2016 ¦ “Antriebseinrichtung für Schienenfahrzeug: Zugänglichmachung Öffentlichkeit; notwendige Auslage Patentanwalt”

Bombardier Transportation GmbH

./.

(1)  Stadler Altenrhein AG
(2)  Stadler Bussnang AG
(3)  Stadler Rail AG

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Daniel KRAUS
  • Dr. Markus MÜLLER
  • Dr. Christophe SAAM

Court Clerk:

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)
  • Matthias KARLHUBER (Cohausz & Florack), assisting in patent matters

Representative(s) of Defendants:

FULL TEXT OF THE DECISION

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ECC forces Nestlé Nespresso onto the defensive, pushes for a decision

Case No. O2015_001 ¦ Main Hearing of 15 June 2016

ECC logo (source: ECC)
ECC logo (Source: ECC)

As reported earlier on this Blog here, Ethical Coffee Company (ECC) has sued Nestlé Nespresso SA for patent infringement. Long time no hear in this matter since February 2015. But now the main hearing took place on 15 June 2016.

Somewhat unexpectedly only the Swiss patent CH 701 971 B1 is at stake; see Swissreg for further details. ECC apparantly has not invoked its corresponding European patent EP 2 312 978 B1; see EPO Register for further details.

The only independent claim 1 of CH’971 reads as follows:

Dispositif pour la préparation d’une boisson extraite à partir d’une capsule (1) comprenant un support de capsule (4) et une cage a capsule (5) a l’intérieur de laquelle sont disposés au moins une entrée d’eau et des moyens de perçage de capsule, caractérise par le fait que ladite cage (5) est agencée de manière à déformer au moins partiellement toute capsule (1) constituée d’un matériau déformable au contact d’eau chaude, qui est disposée dans la cage (5), de manière à ce que la capsule (1) soit retenue dans la cage (5) consécutivement à son contact avec de l’eau chaude.

This (inofficially) translates into English as follows:

Device for preparing a drink extracted from a capsule (1) comprising a capsule support (4) and a capsule cage (5) inside which there are at least a water inlet and capsule-piercing means, characterized in that said cage (5) is arranged in such a way as to deform, at least partially, any capsule (1), made of a material that can be deformed upon contact with hot water, which is placed in the cage (5), so that the capsule (1) is retained in the cage (5) following its contact with hot water.

Confusing, isn’t it? Why should one want a capsule to be retained in the machine? Well, CH’971 itself says this is to discourage the use of capsules that are deformeable upon contact with hot water; see paragraph [0006]. Still confused? It is important to understand that ECC’s biodegradable coffee capsules apparently do not work smoothly with the latest Nespresso machines; they occasionally get stuck — and this is what ECC’s patent is all about; see the mechanical retaining means illustrated e.g. in figures 1 and 2:

ch701971b1_figs

In this example, the internal wall of the cage 5 comprises a recess 6 in the form of an annular groove, the inside of the recess 6 being occupied by a slightly deformable element 7, e.g. an O-ring or a spring which, by allowing itself to be compressed a little, allows a rigid capsule to be inserted into the cage 5, without the capsule 1 becoming deformed. If the capsule 1 softens as a result of its coming into contact with hot water, the side wall of the capsule 1 will be deformed in the region of the recess 6. Once the hot water has been removed, the capsule 1 stiffens and remains jammed in the cage 5, thereby rendering the device inoperative.

The Nespresso® system itself relies on capsules made from aluminum. One would assume that deformation upon contact with hot water is not an issue for these capsules. But for ECC’s biodegradable material, it apparently is. In a nutshell, ECC now claims CH’971 is a patent for the technology it alleges Nestlé Nespresso uses to block its capsules.

Nestlé Nespresso rebuts the alleged infringement; fulfilment of at least the underlined features is denied (see quotation above). In addition, nullity of the patent has been argued as a plea in defense. The plaintiff referred to the decision of an Opposition Division (OD) of the EPO in co-pending opposition proceedings re EP’978 in the same patent family: The opposition filed by Nestec SA has been rejected with decision of 15 March 2016. Note, however, that an appeal is currently still pending (T0696/16). The plaintiff apparently referred to the decision of the OD for the first time only in the hearing. The defendant requested that this reference to the “decision of 29 January 2016” (actually the date of the hearing at the EPO) is belated and thus not to be heard anymore. (Apparently, the court was well aware of at least the existence of the decision of the OD anyhow.)

Further, the defendant elaborated in any detail on an alleged prior user right based on an external contract development project Tolkien; Art. 35 PatA. (Tolkien variants of Nespresso® machines have also been discussed in a UK High Court decision by Arnold J, Nestec SA v Dualit Ltd — [2013] EWHC 923 (Pat); see paragraph [0029].)

Nespresso Production Centre in Avenches, Switzerland
Nespresso® facilities (Source: Nestlé Nespresso)

According to the Wall Street Journal

[t]he stakes for Nestlé are high. All the Nespresso machines currently being sold in Europe, Nespresso’s biggest market, and some of the machines being sold in the U.S. contain the disputed technology.

To get a glimpse of what is going on elsewhere, ECC’s press release of February 10, 2016 is telling. In addition to the present proceedings in Switzerland, ECC has apparently sued Nespresso Deutschland GmbH, Krups GmbH and De’Longhi Deutschland GmbH for infringement of EP’978 and its three utility models DE 20 2010 017 801 U1, DE 20 2010 017 802 U1 and DE 20 2010 017 784 U1. The actions are pending before the District Courts of Düsseldorf (docket no. 4b O 9/16) and Munich (docket no. 7 O 24 470/15); no further information is available to date. Moreover, ECC informed that it has initiated further proceedings in France and Belgium.

We’ll see how all this turns out in the end. The parties did not enter into settlement negotiations; ECC apparently pushes for a decision.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2015_001 ¦ Main Hearing of 15 June 2016

Ethical Coffee Company SA ./. Nestlé Nespresso SA

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Daniel KRAUS
  • Dr. Herbert LAEDERACH
  • Kurt STOCKER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

— PATENT IN SUIT —

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Saurer’s HeatCut system held to infringe Lässer’s EP 1 983 083 B1

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

The main hearing in this matter took place on 27 January 2016; see this Blog here for a report on the hearing and some background information on the subject-matter at stake.

Independent claim 1 of the patent in suit (EP 1 983 083 B1) reads as follows:

1. Method for applying flat pieces of material of any desired form onto an embroidery base (Fig. 6: 42) by means of an embroidery machine, wherein at least one material layer is arranged above the embroidery base (42) and, controlled by the program of the embroidery machine, a relative movement is produced between a cutting device (47) and the material layer (Fig. 6: 44), and, as a result, a flat piece of material of the desired form is cut out of the material layer (44), characterised in that the cutting is carried out by a heatable tip (47) and the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

Yet another independent claim 7 of EP’083 is directed to the device as such and reads as follows:

7. Device for an embroidery machine, for applying flat pieces of material onto the embroidery base (42), for example figures made of another material (44) and/or of another colour than the material of the embroidery base, by embroidering in place, comprising a support (45) for securing the device to an embroidery machine, a heatable tip (47) for cutting the material layer (44) used for the application and means (57, 59) for bringing the heatable tip out of the inoperative position into the cutting position and vice-versa, characterised in that a spacer (55) is provided at the heatable tip (47), which is adjustable in order to determine the penetration depth of the tip (47) into the material layer (44), such that the tip only penetrates into the material layer (44) which is to be cut.

Already the interim assessment of the reporting judge had not been in favor of the defendant, neither concerning infringement nor with respect to the plea of nullity. That did not change anymore, the board of judges essentially followed this assessment.

1.   Nullity

Lack of novelty was not an issue; only inventive step was under dispute. Some discussion apparently concerned the definition of the person skilled in the art. The FPC holds that the person skilled in the art is to be defined in view of the closest prior art that has been chosen — as is the case with the objective technical problem to be solved, too (r. 4.9.2).

The defendant inter alia argued that the patent lacked an inventive step over D1 (JP-A-05-261187). Translation of this document was problematic. I understand from the decision that the defendant apparently only filed a machine translation — at least in first place. While r. 4.3 holds that an ordinary translation has (only) been filed with the defendant’s comments on the interim assessment of the reporting judge, r. 4.9.3 holds that no ordinary translation has been filed at all. In any event, machine translation of patent documents in Japanese language is often confusing. D1 does not make an exception in this respect; the machine translations of the abstract and the specification of D1 that I have obtained from the JPO will give you an idea of just how puzzling such translations sometimes are.

In any event, D1 apparently concerns a sewing machine that also encompasses an embroidery function, incl. a heatable tip (4/5).

However, D1 does not further specify whether M (see figures) is only a frame or a solid table. Moreover, D1 neither discusses cutting of a mulit-layer material, nor any adjustment of the depth of penetration of the tip. The FPC held that the person skilled in the art would not have arrived at the claimed invention relying on D1 alone. Further, the FPC held that the person skilled in the art would not have consulted D2 (pertaining to a laser cutting system) — but even if D2 would have been considered, a spacer would still be missing.

Yet another document was considered in combination with D1. At least a kind-of-document, i.e. paragraph [0006] of the patent in suit. This paragraph [0006] of the patent reviews the prior art document DE 44 26 817 A1. The document as such has apparently not been introduced into the proceedings; paragraph [0006] of the patent is referred to as D4 in the decision. The decision casts some doubt on whether this paragraph [0006] of the patent itself can be considered as prior art. But even if it was considered, a spacer would still be missing.

The decision also discusses an alleged lack of an inventive step over D4 (reviewing DE 44 26 817 A1) as closest prior art. However, it was not held obvious (from D4 alone or in combination with D1) to replace a laser system with a heating tip and to further include a spacer. A further combination with US 3,902,042 (D3) did not succeed, either.

Finally, the defendant had submitted JP 82 43 776 A only belated, without any justification according to Art. 229 CPC for the late submission. The document has not been considered anymore.

In sum, the FPC held that the prior art on file did not prejudice validity of the patent in suit.

2.   Infringement

The invention is all about a cutting technology in embroidery machines which relies on a heatable tip. This heatable tip (47) and a spacer (55) provided at the tip can be seen e.g. in Fig. 3 and Fig. 3a of the patent; see also paragraph [0017] of EP’083 for further details on the spacer.

EP 1 983 083 B1, Fig. 3 and 3a
EP 1 983 083 B1, Fig. 3 and 3a

A key issue in this case is whether the HeatCut fabric pressers are spacers (55) in the sense of the patent in suit. Let’s recall the HeatCut configuration:

O2014_009_featured_image
Front page illustration of HeatCut brochure

The black tip in the middle of the picture is the heating tip. The silvery bars that are intermittently arranged on top of the fabric are so-called fabric pressers.

The FPC held that the claims do not require the spacer and the heatable tip to be provided on one an the same structural unit (this is only an embodiment according to Fig. 3/3a above, but not mandatory). According to claim 1, the spacer only has to be provided sufficiently close to the heatable tip to fulfil its function, i.e. to determine the penetration depth into the material layer:

[…] the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

From the evidence on file, the FPC had no doubt that the fabric pressers are arranged exactly like that and for the very same purpose in the attacked embodiment; infringement of claim 1 was thus established.

Infringement of claim 7 was a bit more tricky. The plaintiff had argued in first place that the support (45) is not part of the claimed device. A prayer for relief including the support was only presented as an auxiliary request, and only this auxiliary request was finally allowed on the basis of the support identified in the illustration below.

Illustration of the support
Illustration of the support

The FPC clearly held that the support is part of the device as claimed and thus dismissed the higher-ranking request. This is also why the plaintiff got stuck with a share of 1/5 of the costs. But on the merits, the patent was held valid and infringed.

As to the cost, the FPC held that internal costs for patent attorneys employed with the group of companies of the defendant cannot be considered at all; these costs are not necessary expenses according to Art. 3 CostR-PatC.

Der von der Beklagten geltend gemachte patentanwaltliche Aufwand ist durch die Inanspruchnahme von konzern-internen Dienstleistungen entstanden und ist damit als interner Aufwand zu qualifizieren, für den unter dem Titel notwendige Auslagen kein Raum ist.

In addition to injunctive relief, the defendant has also been ordered to provide accounting on the infringing acts. This right is based on Art. 66 lit. b PatA. That’s always annoying for parties held to infringe. Here, the defendant had requested the court to take appropriate measures to ensure that its legitimate interests are not infringed, such as business secrets (Art. 156 CPC). However, the legitimate interest remained unspecified. In any event, the FPC now clearly held that the right based on Art. 66 lit. b PatA cannot be limited by procedural measures. Based on the information to be provided within 60 days after the decision has become final, the plaintiff will next have to quantify his claim; Art. 85(2) CPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

Lässer AG Stickmaschinen ./. Saurer AG

Subject(s):

  • Infringement / claim construction
  • Spacer of embroidery machine

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • André ROLAND
  • Dr. Christian HILTI

Reporting judge:

  • Dr. Tobias BREMI

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of claimant:

  • Dr. Andri HESS (Homburger)
  • Philip SCHNEIDER (SMS)
  • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer)
  • Delia FEHR-BOSSHARD (Vischer)
  • Arndt HAMANN (Saurer, inhouse), assisting in patent matters
  • Bernhard RÜBER (Saurer, inhouse), assisting in patent matters

FULL-TEXT

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