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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The wood, the trees and the separation of proceedings in O2016_003

Well, shame on me, I haven’t seen the wood for the trees: The procedural decision in the matter O2016_003 (reported here) obviously relates to the suit filed by Illumina and Verinata Health against Genoma; see this Blog here.

“EP 000” is  EP 0 994 963 B2. Opposition/appeal proceedings have been concluded with decision T 0146/07; see EPO Register for details.

“EP 111” is EP 1 981 995 B1. The hearing before the OD is scheduled for 18 November 2016; see EPO Register for details.

“EP 222” is EP 2 183 693 B1. The hearing before the OD is scheduled for 08 June 2016; see EPO Register for details. [UPDATE 29 July 2016: The OD has decided to maintain the patent in amended form on the basis of the first auxiliary request.]

“EP 333” is EP 2 514 842 B1 which has only been granted on 24 February 2016; see EPO Register for details.

Reported by Martin WILMING

Separation of proceedings in view of co-pending EPO proceedings

Case No. O2016_003 ¦ Order of 02 May 2016 ¦ “Prozessaufteilung”

Entities A and B (in a joinder of parties) have sued C for patent infringement. Four European patents are at stake (EP 000, EP 111, EP 222 and EP 333). A and B are exclusive licensees of the patents: Entity A is licensee of EP 000, EP 222 and EP 333; B is licensee of EP 111. The case has been separated in view of the different status of proceedings at the EPO (don’t be misled by the german term ‘Rechtsstand’ used in the decision; the formal status of all the patents is obviously granted): Opposition proceedings at the EPO have already been concluded for one of the patents (EP 000). For two other patents (EP 111 and EP 222), oral proceedings are scheduled for September and June 2016, respectively. The last patent in suit has only been granted in February 2016 and it is thus still open for opposition (EP 333).

line_spliting_50The FPC held that the case would be ready for decision at very different points of time, depending on the status of proceedings at the EPO. Thus, the FPC ordered the separation of the jointly filed action in order to simplify the proceedings; Art. 125 CPC, lit. b:

  • The suit based on EP 000 (plaintiff A) will be continued under case ID O2016_003;
  • The suit based on EP 111 (plaintiff B) will be separately continued under case ID O2016_004;
  • The suit based on EP 222 and EP 333 (plaintiff A) will be separately continued under case ID O2016_005.

Another issue at stake is the choice of the language to be used by the parties. The plaintiffs used the English language and have submitted a letter allegedly confirming the agreement of the defendant with the use of the English language. However, the letter was apparently not issued by the defendant itself but a parent company. This letter was thus not considered as a consent of the defendant in accordance with Art. 36(3) PatCA; such consent is still outstanding.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_003 ¦ Order of 02 May 2016 ¦ “Prozessaufteilung”

A. (n/a)
B. (n/a)

./.

C. (n/a)

Board of Judges:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Reporting Judge:

  • n/a

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • n/a

FULL-TEXT

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Illumina sues Genoma for infringement of NIPT patents

illumina

Illumina (ILMN (NASDAQ)) yesterday announced that it, and its wholly owned subsidiary, Verinata Health, Inc. (together “Illumina”), filed a patent infringement suit against Genoma SA in the Federal Patent Court in Switzerland.

esperiteGenoma is a fully owned subsidiary of Esperite and was created in May of 2014. Esperite itself is listed at Euronext Amsterdam and Paris (ESP (EURONEXT)). Illumina informs that it is seeking all available remedies, including damages and injunctive relief.

The patents asserted are EP 2 183 693 B1, EP 0 994 963 B2, EP 1 981 995 B1, and EP 2 514 842 B1, according to the press release. The patents are directed to using cell-free fetal DNA for non-invasive prenatal testing (NIPT).

Genoma's Tranquility®
Genoma’s Tranquility®

The suit apparently accuses Genoma’s Tranquility® NIPT testing service, including its use of next-generation sequencing to analyze cell-free DNA from a sample of maternal blood. According to Illumina, Genoma’s testing facility in Switzerland also services samples collected from its other labs, including those located in Spain and Italy.

Illumina alleges that the Tranquility NIPT service uses the IONA® test sold by Premaitha Health plc. Illumina previously filed separate suits against Premaitha in the United Kingdom for sale of the IONA test.

See Illumina’s press release here.

UPDATE May 31, 2017:

Genoma SA is challenging a decision on liquidation which it had to face as a consequence of this litigation. See Esperite’s press release of May 19, 2017.

Reported by Martin WILMING

Bombardier ./. Stadler: A case of interest for commuters

Case No. O2012_043 ¦ Main Hearing of 16 March 2015

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

Plaintiff in this infringement action is Bombardier Transportation. The defendants of the Stadler group of companies essentially only argued for nullity as a plea in defense. The patent in suit is EP 1 963 157 B1 (see EPO Register and Swissreg for any further details). Stadler and Siemens had already challenged EP’157 in opposition / appeal proceedings at the EPO, but the patent was maintained as granted; see the decisions of the OD and the BoA here and here. The proceedings at the FPC had been stayed pending the decision of the BoA.

Now, what is the patent all about? In simple terms, it 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).

From the writ and the interim assessment of the reporting judge (both were put on file in EPO opposition / appeal proceedings; see here and here) it is clear that Stadler’s electric double-deck trains KISS are at stake:

Excerpt from interim assessment of the reporting judge, p. 3
Excerpt from interim assessment of the reporting judge, p. 3

See the interim assessment for any further information:

Download (PDF, 830KB)

In brief, the interim assessment held that (i) EP’157 is not novel over documents (compiled here from the EPO online file-wrapper) that had been submitted from ABB to Siemens and Stadler without confidentiality obligation; (ii) alternatively, EP’157 is not inventive over a combination of Wieser and Red Line Car. Further, a prior user right was acknowledged in the interim assessment (Art. 35 PatA), based on an offer provided to the Swiss Federal Railways (SBB).

All these issues were extensively discussed. In addition, the defendant also alleged a lack of novelty / inventive step over a presentation given by Peter Spuhler at a UITP conference (and corresponding documentary material in a database). My personal quote of the day: With respect to the prior user right, the defendant noted that the plaintiff merely refused to enter into a “dogmatic infight.”

Die Klägerin betreibt ein dogmatisches Durcheinander; sie verweigert den “dogmatischen Nahkampf”, […]

The parties also filed their debit notes. The value in dispute is CHF 1m. The plaintiff requested compensation for legal representation according to the tariff (Art. 5 CostR-PatC); no debit note was put on file in this respect. Plaintiff’s alleged costs for an assisting patent attorney amount to approx. CHF 15k. On the other hand, the defendant asserted much higher costs: CHF 376k for legal representation; CHF 104k for a former team of assisting patent attorneys and CHF 66k for the assisting patent attorneys currently on file. It remains to be seen whether the value in dispute is to be adjusted.

The parties did not enter into settlement negotiations.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2012_043 ¦ Main Hearing of 16 March 2016

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)

Representative(s) of Defendants:

— PATENT IN SUIT —

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Lässer ./. Saurer, reloaded

Case No. O2014_009 ¦ Hearing of 27 January 2016

Dejà-vu! Lässer and Oerlikon Saurer Arbon were already litigating in the matters S2012_004 and S2014_004. We note a change in Lässer’s litigation team: Lässer is now represented by Andri Hess (Homburger). Again, but now for the first time in main proceedings, EP 1 983 083 B1 is at stake. The patent is about heat cut technology used in embroidery machines.

Independent claim 1 of EP’083 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.

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

Heatable tip (47) and spacer (55) 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.

Apparently, the interim assessment of the reporting judge had not been in favour of the defendant, neither concerning infringement nor with respect to the plea of nullity.

From what has been discussed in the hearing, it seems that the interim assessment ignored the underlined feature of the claim, at least in the feature analysis. It remains to be seen whether this has the potential to turn the interim assessment or not.

HeatCut illustration (Source: Saurer)
HeatCut illustration (Source: Saurer)

Saurer’s HeatCut technology evidently makes use of a heating tip; see the black tip in the middle of the picture taken from Saurer’s HeatCut website. This technology also relies on so-called fabric pressers; see the silvery bars that are intermittently arranged on top of the fabric. Apparently, a key issue in this case is whether these fabric pressers are spacers (55) in the sense of the patent in suit.

The defendant showed a PowerPoint presentation during his submission; printouts were handed over. Various figures and aspects of this presentation were objected as inadmissible  / in violation of Art. 229 CPC; presentation of new facts and evidence at the main hearing is only admissible if they are so-called proper novae or, at least, improper novae. Hearings are always good for surprises, but the President was not amused:

Erzählen Sie zu dem Bild, was Sie wollen — wir müssen uns das Bild halt wegdenken.

Tell us what you want concerning this picture — we have to imagine it wasn’t there.

Finally, the value in dispute was adjusted. The parties had initially agreed on CHF 300’000,–, but reality is way ahead of this; expenses so far for legal representation: kCHF 127 (plaintiff) and kCHF 221 (defendant); patent attorney costs: kCHF 41 (plaintiff) and kCHF 73 (defendant; in-house patent attorney in the group of companies of the defendant). In view of these relatively high costs the value in dispute was set to CHF 5m; both parties agreed. These party costs are a great deal of money, indeed — but their former case HG.1998.27 before the Commercial Court of St. Gallen had been even more costly.

Both parties agreed to enter into the non-public part of the hearing / settlement negotiations.

Reported by Susanna RUDER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_009 ¦ Hearing of 27 January 2016

Lässer AG Stickmaschinen ./. Oerlikon Saurer Arbon AG

Subject(s):

  • Infringement
  • Plea of nullity

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President, Judge)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • André ROLAND (Judge)
  • Dr. Christian HILTI (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of claimant:

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

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer AG)
  • n/a, assisting in patent matters

— PATENT IN SUIT —

EP 1 983 083 B1:

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Nordson ./. GEMA: Claim construction and patentability — which court has it right?

Case No. O2013_008 ¦ Decision of 25 August 2015 ¦ “Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage)”

 

HEADNOTE

Art. 66(2) lit. b PatA:
Based on Art. 66(2) lit. b PatA in case the court finds infringement there is a substantive entitlement to information and accounting.

[Reference to al. 2 of Art. 66 PatA in the headnote might be misleading; there is no formal al. (2) in Art. 66 PatA. This is marked-up / corrected in the quotation above.]

 

1.  Background of the case

The main hearing in this infringement case has taken place on 15 June 2015; see this Blog here. The patent in suit is EP 899 016 B1 of Nordson Corp.; see Swissreg for further bibliographic details. It pertains to a spray gun for powder coatings like the one shown in Fig. 2:

Fig. 2 of EP 899 016 B1
Fig. 2 of EP 899 016 B1

The only independent claim 1 as granted reads as follows (structured according to the feature analysis recited in the decision):

O1: An apparatus (20) for use in applying coating material to an object

O2: comprising a spray gun (24) having

O3: a handle portion (26),

O4: an extension portion (28)

O5: which is connected with the handle portion (26),

O6: a nozzle (42)

O7: connected with the extension portion (28),

O8: an electrode (46) disposed adjacent to the nozzle (42)

O10: and away from which electrostatically charged coating material flows toward the object,

O11: a coating material flow control member (74)

O12: connected with the handle portion (26) and

O13: manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object,

characterised in that

K14: the spray gun (24) also has a purge air flow control member (110)

K15: connected with the handle portion (26) and

K16: which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).

2.  What’s it all about?

The plaintiff markets a product according to the patent under the tradename Encore®; see the so-called PowerPurge trigger on the handle in the snapshot below:

power_purgeThe defendant is GEMA Switzerland GmbH. Defendant’s attacked product is the OptiFlex 2 GM03 gun:

optiflex2_product_figure

The attacked embodiment is further specified in the wording of the judgement with three functional illustrations, as follows (with corresponding annotations in English):

As can be seen in the above illustrations, the attacked embodiment has only one trigger (17) at the front of the handle (the Encore® gun has two triggers there; see above illustration). In normal operation, trigger (17) of the attaecked embodiment triggers the powder flow. By means of the key T3 on the backside remote control of the gun, functionality of the trigger (17) can be switched to activate / stop the rinsing process. The Encore® gun does not have such a dual functionality of one and the same trigger, but rather has separate triggers for powder and purge air.

3.  Claim construction and infringement

Essentially, only three claim features were under dispute with respect to claim construction and infringement.

3.1  Are control members (74) and (110) separate elements or not?

The claim requires a coating material flow control member (74); see feature O11. Feature K14 of the claim further requires that (emphasis added)

the spray gun (24) also has a purge air flow control member (110).

Parties dissented on the question of whether or not the material flow control member (74) and the purge air flow control member (110) are to be distinct elements or whether they could both be embodied by one and the same element. Evidently, in the Encore® gun and in the specific embodiments of the patent, these elements are distinct.

The FPC held that both elements may well be realized according to the patent by one and the same element having two functionalities. It is emphasized that embodiments may not be relied on in order to construe the claim in a more limited way than the claims demand for. The general specification and the claims do not mandatorily require that both elements are distinct. The attacked embodiment was thus held to realise feature K14.

But what about the “also” in K14, you ask? Interesting point. Note that the Dusseldorf Regional Court had come to a different conclusion; see decision 4b O 25/13. The Dusseldorf court relied on the German term “ausserdem” (see the German version of claim 1 of EP 899 016 B1). The term used in the (original) English language of the patent is “also”, and the FPC thus exclusively relied on the term “also” (in the sense of “auch”).

3.2  What does connected with the handle portion (26) actually mean?

Feature K15 requires that the purge air flow control member (110) be connected with the handle portion (26). The FPC held that this wording even allows for an indirect connection of purge air flow control member and handle portion.

One-handed operation
One-handed operation

In a function-oriented construction of this feature, the FPC concluded that the connection has to allow for the purge air flow control member being reachable by a user holding the gun at the handle portion. Thus, the purge air flow control member has to be arranged such that a one-handed operation of the gun is enabled.

From an illustration in marketing material of the defendant, it is evident that this functionality is realised by the attacked embodiment.

3.3  And what is the meaning of to initiate a flow of air?

Feature K16 requires that the purge air flow control member (110) be manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24). It was a matter of dispute whether this covers embodiments where (i) a flow is only initiated if the purge functionality has been unlocked beforehand (by means of another key); or (ii) the flow is not initiated directly, but rather only indirectly by a downstream controller in response to a keystroke on the purge air flow control member. Both situations were held to be covered by this claim feature, and the attacked embodiment was thus held to realise feature K16.

4.  Patentability

The defendant had argued for nullity as a plea in defense. Allegedly, the claimed subject-matter was not novel over D1. However, D1 is silent about the actual location of the purge air flow control element. The FPC thus held that novelty was given, in line with a decision of the Federal Patent Court of Germany in parallel proceedings (see below). Note that D1 is recited as prior art in the patent in suit (see para. [0001] of EP 899 016 B1) and had already been considered during EPO prosecution).

Defendant also argued that the claimed subject-matter was not novel over D2. This gun has a trigger (36) that allows for a flow of air to be directed through channels (51) to the nozzle.

However, there is no flow of air through the powder path, as essentially required by feature K16. Air in D2 is used to generate a swirl into which the powder is then supplied; the purpose is thus a different one compared to the purge air of the patent in suit. Note that there is disclosure of purge air for the supply channel of the powder in D2, but this one is being operated manually by a valve on a separate control panel (11) on the powder pump, i.e. not on the gun itself. Novelty over D2 was thus acknowledged, too. Again, this is in line with the decision of the Federal Patent Court of Germany in parallel proceedings (see below).

Defendant further alleged a lack of inventive step over D1 in further view of the knowledge of the person of skill in the art, exemplified by D3, D4, D5, D6. Apparently, only the argumentation with respect to the combination with D3 had been elaborated in detail. It was beyond dispute that D1 can reasonably be considered as the closest prior art. As mentioned above, D1 is silent about the actual location of the purge air flow control element. From D1 alone, it cannot be concluded that a location for such a control element on the handle was obvious. Other locations such as illustrated in D2 would also be reasonable. Moreover, a foot pedal, clocked or sensory air pulses, or a control element to be used with the other (free) hand of the operator could be envisaged. Thus, the FPC concluded that D1 in further view of the knowledge of the person of skill in the art does not render the claimed subject-matter obvious. This is where the Federal Patent Court of Germany explicitly concluded differently:

Ein derart häufig und darüber hinaus auch noch leicht zu aktivierender Spülluftstrom vermittelt dem Fachmann jedoch, dass das Spülluftstromregelungselement in seiner unmittelbaren Nähe positioniert sein muss und demzufolge nicht entfernt von der Spritzpistole platziert sein kann, da er die Steuerung der Spülluft zudem individuell und somit manuell vornehmen wird. Da die D1 selbst keine Angaben macht, wo ein derartiges Regelungselement angebracht ist, positioniert der Fachmann dieses in unmittelbarer Nähe des Bedieners, wobei die Spritzpistole selbst als Ort der Positionierung am nächstliegenden erscheint.

The FPC held that the German court erred and had based its conclusion on an undue ex-post-facto analysis: D1 is silent about a location in close proximity, and a remote location is not indictated as disadvantageous. Moreover, not even a manual operation / initiation is mentioned in D1. Finally, the combination of D1 with D3 failed mainly because D3 does not concern a powder spray gun, but rather a hydraulic spray gun for liquid substances. Again, the German Federal Patent Court concluded differently. However, the German court obviously relied on a further document D30 (see p. 22, last paragraph) in addition to D3, but this document was not put on file in the Swiss proceedings, for whatever reason.

Further prior art documents D4, D5 and D6 relate to applicators for more-component reactive compositions instead of powder coatings. The  FPC thus held that the person skilled in the art would not even consider these documents.

5.  Legal aspects and costs

5.1  Plea of free prior art

Defendant also presented a plea of free prior art, interpreted by the FPC as a plea for nullity. However, patentability over the cited prior art was acknowledged; see above. The FPC held that a plea of free prior art could only be considered if an infringement under the doctrine of equivalents were at stake. In case of a literal infringement, this plea is pointless:

Die Einrede des freien Stands der Technik könnte ohnehin nur zum Zug kommen, wenn nicht eine wortsinngemässe Patentverletzung, sondern Äquivalenz zu beurteilen ist.

5.2  Substantive entitlement to information and accounting

This is what the headnote is all about. As outlined above, validity and infringment of the patent had been established, but the plaintiff had not provided further reasoning or evidence with respect to the financial compensation sought for in this action by stages. In a nutshell, the defendant argued that only the quantification is deferred to the second stage of the proceedings, but not the whole burden of proof as to the further legal requirements for financial compensation. For instance, the plaintiff had not presented any allegations as to the bad faith of the defendant — a requirement for recovery of defendant’s profits. With respect to damages for lost profits, the plaintiff had neither argued nor substantiated that he makes any profits with products according to the patent.

The FPC held that the defendant’s substantive duty of disclosure and accounting is directly based on Art. 66 lit. b PatA since an infringement had been established. At the first stage of the proceedings, the plaintiff is not obliged to establish the further legal requirements for recovery of defendant’s profits, or damages.

5.3  Costs

The value in dispute was CHF 2.6 m, and the parties apparently put an enormeous effort into it. Compensation for legal representation in the amount of CHF 80’000,– was awarded to the plaintiff, according to Art. 3 ff. CostR-PatC. Noteworthy, costs awarded for the patent attorney were even higher, i.e. CHF 114’185,64.

6.  Parallel decisions in Germany

With decision of April 29, 2015  the German Federal Patent Court had maintained the patent only in a more limited extent, i.e. as follows (marked-up; see 4 Ni 26/13 for details):

An apparatus (20) for use in applying powder coating material to an object comprising a spray gun (24) having a handle portion (26), an extension portion (28) which is connected with the handle portion (26), a nozzle (42) connected with the extension portion (28), an electrode (46) disposed adjacent to the nozzle (42) and away from which electrostatically charged coating material flows toward the object, a coating material flow control member (74) connected with the handle portion (26) and manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object, characterised in that and a coating material passage (62) in said extension portion (28), characterised in that the apparatus has a valve (94), a conduit (98) and a controller (70) which, simultaneously with opening of a valve (54) and closing of a switch (78), operates the valve (94) to an open condition to enable electrode wash air under pressure from a source (96) of electrode wash air to flow through the conduit (98) to the handle portion (26) and from the handle portion (26) of the spray gun (24) through the extension portion (28) of the spray gun (24), the spray gun (24) also has a purge air flow control member (110) connected with the handle portion (26) and which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).

These amendments in the German proceedings were not based on dependent claims; the added features were taken from the description. 

In infringement proceedings, the Düsseldorf Regional court decided for non-infringement of the patent as granted, neither literally nor under the doctrine of equivalents; see decision 4b O 25/13.

What’s next?

The decision has been appealed to the Supreme Court. A decision can be expected by mid 2016.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2013_008 ¦ Decision of 25 August 2015 ¦ “Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage)”

Nordson Corporation ./. GEMA Switzerland GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Herbert LÄDERACH
  • Christoph MÜLLER
  • Dr. Simon HOLZER

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

  • Dr. Christian HILTI (Rentsch)
  • Dr. Jens OTTOW (Rentsch), assisting in patent matters

Representative(s) of Defendant:

— DECISION IN FULL —

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Non-return valve for urinals: Does it stink up to the sky? Or is it gas-tight?

Case No. O2014_002 ¦ Main Hearing of 14 September 2015

The patent in suit is EP 1 579 133 B1; plaintiff and currently registered owner of the patent in Swissreg is Daspaco AG.

Independent claim 1 of EP’133 reads as follows:

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.

Defendant (1) is Enswico AG. More precisely, it was. Enswico AG has recently sold its operative business, according to information on their website (screenshot below taken today). Bankruptcy proceedings have been opened with decision of 31 August 2015; see Commercial Register. Thus, proceedings have been split and today’s hearing in the matter O2014_002 only concerned the second defendant, Van Allmen AG. Separate proceedings against Enswico AG (in liquidation) will be continued, too (O2015_013). The attacked product is Enswico’s valve used in waterless urinal systems:

This video (see https://youtu.be/-JzslgVMzvI) helps to understand how the valve works:

The second defendant, Von Allmen AG, apparently produced the valves for Enswico AG. Two embodiments of the valve are at stake: A first generation embodiment where the flaps were not connected at the lower end; and a second generation where the two flaps are interconnected by connectors. It has been argued that the second generation embodiment is subject of granted EP 2 553 299 B1 (see characterizing part of claim 1 and Fig. 8 ff).

From what has been argued I conclude that the preliminary assessment of the reporting judge must have been in favour of the plaintiff’s position, i.e. that the patent is infringed (by both embodiments) and valid. Accordingly, the plaintiff’s opening pleadings were succinct, fully supporting the assessment of the reporting judge. Not so the defendant’s reply. In brief, four major issues were adressed in subsequent pleadings of the parties:

i)    (Lack of) distinctiveness of the request

From what has been argued I tend to assume that the claim language “high inherent degree of flexibility” is literally recited in the plaintiff’s request for injunctive relief. Parties dissented on the question of whether or not this wording is specific enough in order to meet the legal requirements as definied e.g. in the decision BGE 131 III 70 E3.3 of the Supreme Court. Defendant insisted that the case should not be considered in view of the improper request.

ii)    Claim construction by the reporting judge

Fig. 3 of D1
Fig. 3 of D1

I understood from the plaintiff’s pleadings that the reporting judge had interpreted a non-return valve according to the patent as a valve which is gas-tight when it is slack, without special outer influences. It was disputed that a gas-tight closure is achieved in the dry state, at least for the second generation embodiment. In a nutshell, defendant argued that if the reporting judge’s assessment were correct, then at least the second generation embodiment cannot infringe since it is not gas-tight without special outer influences. Else, if the construction of this feature was not correct, at least the prior art document D1 (US 3 835 857) would be novelty-destroying for the patent in suit.

Next, the inlet section (5) in the form of a self-supporting trough-shaped section has been discussed. Defendant argued that if in D1 the inlet section was not self-supporting since it is made from the same material as the flaps, then both the first and second generation could not infringe — because the same material is used for both elements.

iii)    Undue extension of subject-matter

Defendant raised various objections in this respect. First, the documents as filed allegedly only disclosed a valve that “has a component (4) having a flat strip (6).” Defendant argued that this implies a one-piece construction, in light of the whole specification (e.g. manufactured in an injection moulding process). To the contrary, claim 1 as recited above requires a connection (of two parts?). Defendant argued that this constitutes an undue extension of subject-matter.

Second, defendant alleged a shift from a complementary component to (only) a complementary surface of such component in the granted claim.

iv)    Equivalency

From the discussion at the hearing, I conclude that two features of the claim were held to be not literally fulfilled by the attacked embodiments, but rather only under the doctrine of equivalents. Interestingly, the features at stake are marked-up as amendments in the DREX, i.e. were at least not irrelevant for the patent to proceed to grant: First, that the component is separate from the strip. Note that the second generation embodiment has connectors (which, in turn, is a patented embodiment; see above). And second, that it is (only?) the lower end of the flexible strip that seals.

Parties finally entered into non-public settlement negotiations.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2014_002 ¦ Main Hearing of 14 September 2015

Daspaco AG
./.
(1) Enswico AG
(2) Von Allmen AG

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Christoph GASSER
  • Dr. Ralph SCHLOSSER
  • Werner ROSHARDT

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • Dr. Tobias BREMI

Representative(s) of Plaintiff:

Representative(s) of Defendant (2):

  • Dr. Demian STAUBER (Rentsch)
  • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
  • Dr. Andri HESS (Homburger), “supporting the team”

— PATENT IN SUIT —

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Drospirenone, again — but this time produced in a surprisingly different way

Case No. S2015_002 ¦ Decision of 20 August 2015 ¦ “Abweisung vorsorgliche Massnahmen; Verletzungshandlung nicht glaubhaft gemacht”

This is yet another case relating to the contraceptive drospirenone. See this Blog here, here and here for details on an earlier case (with different parties) and relevant background information.

Drospirenone
Drospirenone

The plaintiff again sought for preliminary injunctive relief and invoked two European patents: EP 1 149 840 B2, which had already been at stake in the earlier case; and  — for the first time — the only recently granted EP 2 168 974 B1 (a divisional of EP’840). Both patents relate to methods for the production of drospirenone (DRSP), a compound used in contraceptives (birth control pills).

Plaintiff (1) is the registered proprietor of the Swiss part of EP’840, i.e. Bayer Pharma AG. Plaintiff (2) is the registered proprietor of the Swiss part of EP’974, i.e. Bayer Intellectual Property GmbH.

The independent claims of EP’840 and EP’974 only differ slightly. The single claim of EP’974 reads as follows:

Process for preparing drospirenone from [well, let’s call it ‘precursor A’] in isolated form by water elimination.

On the other hand, the single claim of EP’840 reads as follows:

Process for preparing drospirenone by water elimination from [precursor A] through addition of p-toluenesulphonic acid to [precursor A].

EP’974 thus requires [precursor A] in isolated form, but is not limited to a certain catalyst for water elimination. To the contrary, EP’840 explicitly recites p-toluenesulphonic acid as the catalyst, but does not require the isolated form of [precursor A].

From the details given in the decision, it is evident that the defendant is Spirig HealthCare AG. The three products concerned are Sue 20, Sue 30 and Suzanne:

Reasoning presented by the plaintiffs as to why these products are infringing both EP’840 and EP’974 was an intricate issue: From a LOT number imprinted on the blisters, it was concluded that the Spanish company Laboratorios Léon Farma S.A. was the manufacturer. In turn, this company allegedly obtained drospirenone inter alia from the Italian company Industriale Chimica s.r.l.; both companies are parties in opposition proceedings re EP’974 at the EPO (see EPO register). Moreover, it has been alleged based on information from parallel proceedings in Germany, Spain and Switzerland that the method for manufacturing the drospirenone used by Industriale Chimica s.r.l. was as follows:

Allegedly used method of manufacturing drospirenone
Allegedly used method of manufacturing drospirenone

This was a non-starter. The defendant denied that the method outlined above had been used. Rather, defendant argued that a one-step palladium-catalyzed synthesis was used:

Palladium-catalyzed one-step synthesis of drospirenone
Palladium-catalyzed one-step synthesis of drospirenone

The defendant even provided exhaustive evidence in support of this synthesis being used, i.e. purchase orders, declarations of personnel of both Laboratorios Léon Farma S.A. and Industriale Chimica s.r.l., as well as an excerpt from the “Drug Master File Drospirenone D., Module 999: Description of manufacturing process and process controls”.

Plaintiffs did not allege that the one-step palladium-catalyzed synthesis would infringe EP’840 and EP’974. Rather, only the actual use of the palladium-catalyzed synthesis was disputed. Plaintiffs argued that defendant’s documentation had not been approved by an independent third party. Moreover, the palladium-catalyzed synthesis would be too expensive and more difficult to handle, for security reasons.

The FPC held that the documentation provided by the defendant in support of the palladium-catalyzed reaction was credible. Plaintiffs’ suspicion of false testimony was held unfounded, as well as the arguments with respect to the feasibility of the palladium-catalyzed process for cost and security reasons.

Consequently, the plaintiffs have failed to furnish prima facie evidence for a patent infringement. To the contrary, defendant’s documentation was held to credibly establish a case of non-infringement, by prima facie evidence. The plaintiffs’ request for interim injunctive relief was thus dismissed.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2015_002 ¦ Decision of 20 August 2015 ¦ “Abweisung vorsorgliche Massnahmen; Verletzungshandlung nicht glaubhaft gemacht”

(1) Bayer Pharma AG
(2) Bayer Intellectual Property GmbH
./.
Spirig HealthCare AG

Subject(s):

  • Infringement
  • Interim injunctions
  • Drospirenon II

Board of Judges:

  • Dr. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Simon HOLZER (MLL)
  • Gregor KÖNIG (KSVR), assisting in patent matters

Representative(s) of Defendant:

— DECISION IN FULL —

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Protection of potential trade secrets in an action by stages

Case No. O2012_033 ¦ Decision of 02 June 2015 ¦ “Action échelonnée: obligation de fournir des renseignements; possibilité de sauvegarder des secrets d’affaires”

De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)
De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)

Déjà-vu, you think? Indeed, this procedural decision is a follow-up on a decision of 30 January 2014 (commented in any detail here). In brief, certain De Grisogono watches were held to infringe a patent of Richemont, and injunctive relief had thus been granted. This decision had been appealed by De Grisogono, but the Supreme Court had rejected the appeal with decision of 02 October 2014; see 4A_142/2014.

In consequence, the second aspect of Richemont’s action by stages came into play, i.e. De Grisogono had to open the books in order to enable the plaintiff to quantify the damages. According the the decision of 30 January 2014, this had to be done within 60 days after the decision has become final, i.e. until 02 December 2014. After a series of term extensions and incomplete production of documents, the defendant finally – belatedly, without any justification – submitted a DVD-ROM with invoices pertaining to the infringing watches on 07 May 2015. The decision leaves no doubt about the court’s discontentment, for both the delay as such and the documents that have been produced. Apparently, the documentation on the DVD-ROM is not self-explanatory. The defendant was thus obliged to again organize and index the documents in an understandable manner.

Further, the defendant referred to Art. 156 CPC and requested that appropriate measures be taken by the court to ensure that business secrets are protected. In particular, it was requested that the DVD-ROM shall not be made available to the plaintiff. This was a non-starter: The production of documents is only the execution of a partial judgement that has become final. Any such request could (and should) have been made before the judgement had been taken.

At least one ray of hope on the horizon for the defendant: The FPC noted that the documentation on the DVD-ROM contains data not only with respect to the watches at stake, but rather also contains information with respect to jewelry, etc. The defendant was given a final opportunity (with a non-extendable deadline) to accordingly redact the respective documents in order to not disclose these unrelated information to the plaintiff. The FPC notes that if the defendant fails to provide such documents, the plaintiff will be served with the unredacted documents contained on the DVD-ROM that is already on file.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. O2012_033 ¦ Decision of 02 June 2015 ¦ “Action échelonnée: obligation de fournir des renseignements; possibilité de sauvegarder des secrets d’affaires”

Richemont International S.A.
./.
De Grisogono S.A.

Subject(s):

  • Infringement
  • Nullity

Board of Judges:

  • Dr. Dieter BRÄNDLE (President)

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Michel MUHLSTEIN (JMLP)

Representative(s) of Defendant(s):

— DECISION IN FULL —

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Nordson EFD ./. Gema Switzerland

Case No. O2013_008 ¦ Main Hearing of 15 June 2015

The patent in suit is EP 899 016 B1 of Nordson Corp.; the defendant is GEMA Switzerland GmbH. See Swissreg for further bibliographic details of the patent in suit. It pertains to a spray gun like the one shown in Fig. 2:

Fig. 2 of EP 899 016 B1
Fig. 2 of EP 899 016 B1

The only independent claim 1 reads as follows:

An apparatus (20) for use in applying coating material to an object comprising a spray gun (24) having a handle portion (26) Illinois area code , an extension portion (28) which is connected with the handle portion (26), a nozzle (42) connected with the extension portion (28), an electrode (46) disposed adjacent to the nozzle (42) and away from which electrostatically charged coating material flows toward the object, a coating material flow control member (74) connected with the handle portion (26) and manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object, characterised in that the spray gun (24) also has a purge air flow control member (110) connected with the handle portion (26) and which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).

Note that the Federal Patent Court of Germany in a recent decision of April 29, 2015 had maintained the patent only in a limited extent (see DPMAregister and 4 Ni 26/13 for details). It is unclear whether this decision has been appealed.

Neither party was interested in settlement negotiations. We may thus await a decision on the merits of this case.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2013_008 ¦ Main Hearing of 15 June 2015

Nordson EFD ./. GEMA Switzerland GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Herbert LÄDERACH
  • Christoph MÜLLER
  • Dr. Simon HOLZER

Court Clerk

  • Susanne ANDERHALDEN

Reporting Judge:

  • [unknown]

Representative(s) of Plaintiff:

  • Dr. Christian HILTI (Rentsch)
  • Dr. Jens OTTOW (Rentsch), assisting in patent matters

Representative(s) of Defendant:

— PATENT IN SUIT —

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— BE ON THE KNOW —

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