Laurastar ./. Innosteam: Register ban upheld, but what is next?

Case No. S2018_003 | Decision of 24 August 2018 | ‘chaudière-miniature’

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Laurastar and Innosteam are litigating about ownership of two PCT applications, i.e. WO 2018/006994 A1 and WO 2018/036653 A1; see the EPO Register here and here. The patent applications are about devices and methods for producing instant steam (WO’994) and instant hot water (WO’653), for use e.g. in devices for ironing.

We have reported on this Blog here about the provisional register ban that had been issued without hearing the defendant beforehand, and the subsequent hearing.

Laurastar logo

The main disagreement between the parties relates to the relevant time period in which the inventions had been made: While Laurastar alleges that the inventions had been made by Mr. Mantegazzi and Mr. Pasche when they had been employed by Laurastar, defendant submits that the inventions had only been made thereafter, i.e. when Mr. Mantegazzi and Mr. Pasche have been employed by the defendant.

Plaintiff inter alia relied on the following document that was undisputedly created by Mr. Pasche during his employment with the plaintiff:

act. 1_8, created by M. Pasche while employed by the plaintiff

In a nutshell, the present decision maintains the register ban while main proceedings are pending, to sort out the ownership dispute. And this might turn out to be a tricky exercise: The decision provisionally holds that the subject-matter of

  • claims 1, 5, 7, 11, 20 and 21 of WO’653; and
  • claims 1, 5, 7, 8, 9, 11 (first and second option), 22 and 23 of WO’994

had likely already been invented by the two inventors when they had been employed by the plaintiff, in fulfilment of their contractual duties. Rights in these aspects would reside with the plaintiff; Art. 332(1) CO. The two PCT applications may thus have to be partially assigned to the plaintiff (Art. 29(1) PatA) — but only in main proceedings. This co-ownership would be kind of a forced marriage. If it doesn’t work out in practice and the parties get divorced, it will be hard to cut out and reshuffle the respective shares in the inventions.

Now, how to proceed with the two PCT applications in the meantime? They need to be nationalized in early 2019, and a decision in main proceedings is unlikely to be final by then. The decision unmistakably holds that it will be up to the plaintiff to decide how to best protect his interests in this respect:

On ne saurait manifestement condamner la défenderesse à entrer dans les phases nationales dans tous les Etats contractants du PCT, car cela pourrait se révéler prohibitif. Il appartiendra à la demanderesse de décider comment sauvegarder ses intérêts une fois que le délai d’entrée dans les phases nationales approchera de sa fin, ce qui semble être le 5 janvier 2019 (pour WO’994) respectivement le 24 février 2019 (pour WO’653).

Loosely translated:

It is clearly not possible to order the defendant to enter the national phases in all the contracting states of the PCT, as this could be prohibitive. It will be up to the plaintiff to decide how to safeguard its interests once the deadline for entry into the national phases approaches its end, which appears to be 5 January 2019 (for WO’994) and 24 February 2019 (for WO’653), respectively.

Not to be missed

I am very much looking forward to see how this finally unfolds. The immanent time pressure requires some creativity to ensure that no rights in at least the most relevant designated states are lost.

On the procedural side, it is worthwile to note how the FPC dealt with a document that had been submitted by the defendant that contained additional technical data. The defendant requested that this information shall be considered by the court, but not being handed over to the plaintiff. The court held that either a redacted copy shall be submitted that can be provided to the plaintiff, or the defendant shall agree to have the unredacted version provided to the plaintiff’s attorney and patent attorney, for attorney’s-eyes-only and under threat of sanctions according to Art. 292 CC. The defendant chose to not agree to any of these options. Thus, the court did not take this additional document into account at all.

UPDATE 10 October 2018:

No appeal has been filed; the decision in summary proceedings has become final; main proceedings pending.

Reported by Leila MÜLLER and Martin WILMING

BIBLIOGRAPHY

Case No. S2018_003 | Decision of 24 August 2018 | ‘chaudière-miniature’

Laurastar SA
./.
Innosteam Swiss SA

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Ralph SCHLOSSER
  • Dr. Giovanni GERVASIO

Judge-rapporteur:

  • Dr. Giovanni GERVASIO

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

  • Dr. Ivan CHERPILLOD (Bourgeouis)
  • André ROLAND (Roland), assisting in patent matters

Representative(s) of Defendant:

  • Jacy PILLONEL (BCP)

DECISION IN FULL

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WO 2018/006994 A1

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WO 2018/036653 A1

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Whose invention is it?

Case No. S2017_008 ¦ Decision of 29 December 2017 ¦ “Abweisung vorsorgliche Massnahme, Abtretungsanspruch nicht glaubhaft”

Yet another ownership dispute:

Fig. 1b of WO’036

PCT application WO 2016/125036 A1 is at stake; the national phase has already been entered in Switzerland, China, South Korea, USA and at the European Patent Office; please find further information about the patent family here.

The present decision pertains to some interim measures. Inter alia, the plaintiff had requested that an order be issued to the defendant to not dispose of the applications in suit in any way, or to let them lapse. Main proceedings to actually sort out the right in the invention are still pending; O2017_026. See the full complaint below.

The plaintiff had initially been named as an inventor and is still listed on the title page of the PCT application as published, but has later been deleted on request of the applicant while still in the international phase.

The plaintiff essentially relied on an SMS and MMS that he had submitted to the defendant on 6 November 2013:

Bei der PCT-Anmeldung […] handelt es sich um die dargestellte Erfindung des Klägers, die dieser […] am 6. November 2013 D. bzw. der Beklagten mitgeteilt hat; es liegt technische Übereinstimmung vor. Weitere Ausführungen im Bestreitungsfalle bleiben vorbehalten.

MMS and SMS of November 6, 2013

The decision holds that this is obviously not sufficient to establish a prima facie case of entitlement to a patent application of 13 pages, 17 figures and 13 claims. The (then) President notes that the plaintiff failed to show that the three necessary elements (in particular the last one) are met, i.e.

  • that he actually made the invention (what exactly, when, where and how);
  • how the defendant has been made aware of this invention; and
  • how the subject-matter claimed by the defendant actually corresponds to this invention.

For the sake of completeness, the decision also recites two features from claim 1 of the PCT application which cannot be derived from the MMS and SMS. The plaintiff thus failed to show by prima facie evidence that he has any right in the invention at stake.

Further, there was no indication of any urgency on file, i.e. that the defendant might actually undertake any of the actions that were sought to be forbidden. The requested interim measures were denied also for this reason.

UPDATE 10 March 2018:

I just noticed that actually two applications are pending in the U.S., i.e. a continuation application of the PCT application in the name of the plaintiff (US 2017 / 0325923 A1) and a further national phase entry based on the same PCT application in the name of the defendant (US 2018 / 0000560 A1). It remains to be seen how these two applications will interfere with each other during prosecution.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_008 ¦ Decision of 29 December 2017 ¦ “Abweisung vorsorgliche Massnahme, Abtretungsanspruch nicht glaubhaft”

David Bensoussan ./. ROCK dental AG

Judge(s):

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • n/a

DECISION IN FULL

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The correct case no. is S2017_008, as indicated on the title page. Don’t be misled by case no. S2017_002 in the header of pages 2 ff of the decision; that’s a typo.

COMPLAINT AS FILED

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UPDATE 07 March 2018:

Upon intervention of plaintiff’s counsel, I have deliberately redacted plaintiff’s private address and the signatures of plaintiff’s counsel from the complaint, without acknowledging any legal obligation to do so. The writ is freely available in unredacted form in the European Patent Register since 29 December 2017.

PATENT APPLICATION IN SUIT

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Amlodipine & Valsartan: Lessons on assessment of inventive step

Case No. S2017_001 ¦ Decision of 01 June 2017 ¦ “Interim injunctive relief refused; valsartan / amlodipine combined dosage form not inventive”

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

The patent in suit is EP 2 322 174 B1; see EPO Register and Swissreg for further details. Oral proceedings before an EPO opposition division are scheduled for December 6, 2017.

In general terms, the patent is about a fixed dose combined unit dose form of two active ingredients for effective control of blood pressure, ie amlodipine and valsartan. The former is a dihydropyridine calcium-channel blocker, the latter is an angiotensin II antagonist.

Respondent had lodged a nullity suit against this patent earlier; O2016_006. While nullity proceedings were still pending, the patentee requested interim injunctive relief to be ordered without hearing the defendant beforehand. This request had not been granted; see this Blog here. Now, after the respondent had been heard, the request for interim injunctive relief has been rejected: The decision holds that the patent is invalid for lack of inventive step over Corea in further view of the skilled person’s knowledge. In brief, Corea  already disclosed a combination therapy with amlodipine and valsartan, and that a combined therapy results in less side effects. The fixed dose combination of amlodipine and valsartan was held to be obvious in further view of the skilled person’s knowledge as illustrated by WaeberEpstein and Makrilakis.

This outcome is not extraordinary. Rather, it is in line with recent decisions of the Regional Court Düsseldorf of 10 April 2017 and the Commercial Court Barcelona of 22 March 2017.

Still, this decision will be cited for its general considerations on how inventive step is to be assessed. The law itself is pretty clear: An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art; Art. 56 EPC. The state of the art shall be held to comprise everything made available to the public […]; Art. 54(2) EPC. Consequently, the decision holds that it is not permissible to just exclude a document from consideration as a potential springboard towards the invention; see also O2013_011, r 5.6, commented on this Blog here. The term ‘closest prior art’ is held misleading in that it suggests that (i) there is always a single piece of prior art that comes closest to the invention; and (ii) this single piece of prior art also is the best springboard towards the invention. Both assumptions will only rarely be valid. The FPC thus explicitly disagrees with the approach taken in r 11 by an opposition division of the EPO concerning EP 1 096 932, the grandparent patent of the patent in suit, ie to just rule out Corea (referred to as ‘C2’ in these proceedings) as a proper springboard.

The decision also embraces the EPO’s could-would approach; r 4.7.  In the could-would approach one has to ask

[…] whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves.

The EPO Guidelines go on to clarify this as follows:

In other words, the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83).

With reference to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, #73-74) the decision holds that the ‘would’ is satisfied if there is a motivation to arrive at the claimed solution and an expectation of success that this solution actually works:

Dass der Fachmann die erfindungsgemässe Lösung effektiv finden würde gilt als gezeigt, wenn aus den Unterlagen ersichtlich ist, dass der Fachmann einen Anlass hatte (‘motivation’), zur erfindungsgemässen Lösung zu kommen, und er eine Erfolgserwartung hatte, dass die erfindungsgemässe Lösung auch funktioniert (‘expectation of success’).

On a personal note, I do agree that there is definitely no inventive step involved when both ‘motivation’ and ‘expectation of success’ can be shown. But I do not readily understand why both criteria are linked with an — even emphasized — ‘and’ in the above citation. To me, the assessment of ‘expectation of success’ is part of the assessment of ‘motivation’: If the skilled person does not have a reasonable expectation of success, ‘motivation’ can hardly be acknowledged. Having no reasonable expectation of success rather is a de-motivation to further pursue this way. In my perception, ‘expectation of success’ is subordinated to the overall assessment of ‘motivation’, not coordinated. This may also explain why ‘expectation of success’ is not routinely addressed in the EPO’s could-would approach. If there is a specific pointer from one piece of prior art to another one, and if this combination leads straightforward to the claimed invention, then the could-would approach is satisfied. The check for a reasonable expectation of success is typically used as a corrective in cases where an applicant / patentee can show that the pointer at that time would have been ignored for other reasons, and/or the pointer still leaves the skilled person with an undue burden to actually arrive at the invention. Unsurprisingly, by far the most of the EPO’s case-law on ‘reasonable expectation of success’ stems from the fields of genetic engineering and biotechnology where such kind of problems frequently occur. Anyway, all this does not make any difference for the outcome of the case at hand.

The decision also expands on the issue of an alleged undue extension of subject-matter. The only independent claim 1 as granted reads as follows (changes over the claim as initially filed are marked-up):

A pharmaceutical combination composition for use in treating or preventing hypertension comprising:

(i) the AT1-antagonist valsartan or a pharmaceutically acceptable salt thereof;

(ii) amlodipine a calcium channel blocker or a pharmaceutically acceptable salt thereof, and

a pharmaceutically acceptable carrier,

wherein the combination composition is in one fixed combination combined unit dose form.

The decision holds that no multiple selections are necessary in order to arrive at the claimed subject-matter. Explicitly following EPO case law, the decision holds that a selection from a single list does not constitute an undue extension of subject-matter.

Update 12 July 2017:

The decision has not been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_001 ¦ Decision of 01 June 2017 ¦ “Interim injunctive relief refused; valsartan / amlodipine combined dosage form not inventive”

n/a  ./.  n/a

Topics:

  • Inventive step
  • Expert opinion of the judge-rapporteur
  • Ex-parte interim injunctive relief refused
  • Nullity plea in defense
  • Undue extension of subject-matter (Art. 123(2) EPC)
  • Interim injunctive relief

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Prisca VON BALLMOOS

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of Requester:

Representative(s) of Respondent:

DECISION IN FULL

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PATENT IN SUIT

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Clayton

P.S.:
I won’t start selling you my stuff with some cute cat pictures. But since cats are somewhat famous when it comes to IP Blogs, I just cannot help. I started writing this post while we stayed at a friend’s house. Out of a sudden, a cat jumped on the table and glared at me! An IP cat watching me? Whatever I was typing, he would not look happy. Sweet-talking didn’t help, either. What was so wrong?! It took me a while to understand: He wasn’t concerned about what I was doing. He just wanted me to realize that it was well past his dinner time. (No cat pictures any time soon again. Promised.)

Register ban upheld, the crowd of defendants cleared

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A first decision in this matter was issued on 31 January 2017; see this Blog here for a review of the subject matter at stake. In brief, a register ban had been ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution of a patent application which is the subject of an ownership dispute.

UPDATE May 31, 2017:

The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.

A hearing had initially been scheduled for 29 March 2017, but it need not take place: Defendant (1) did not object to the ex parte interim measures. The register ban will thus be maintained pending main proceedings O2017_003.

Apparently, defendants (2) and (3) participated in financing defendant (1). Towards this end, defendant (1) had assigned the patent application to defendant (2) on 8 July 2016. Later, the transfer has been reversed again — by verbal agreement in first place, and on 20/22 February 2017 in writing. Note that the transfer of a patent application by legal act is valid only if evidenced in writing; see Art. 33(2bis) PatA. It is beyond dispute that the current holder of the patent application is defendant (1). The plaintiff only disagrees with the retroactive effect of the re-assignment. However, defendant (2) has no standing to be sued anymore. Defendant (3) has never been the holder of the patent application and has no standing to be sued, either. The FPC thus dismissed plaintiff’s requests targeted at defendants (2) and (3).

The value in dispute is another interesting aspect of this case. The initial assignment of the patent application had been linked with a payment of CHF 594’000,–. On request of the FPC, the plaintiff thus initially submitted that the value in dispute is CHF 600’000,–. Defendants (2) and (3) submitted that CHF 594’000,– must not be considered as the actual value of the patent application. Rather, the amount had been fixed at that time in order to consolidate the financial situation of defendant (1). The plaintiff thus requested that the value in dispute shall be fixed to only CHF 50’000,–. The FPC did not re-adjust the value in dispute but rather sticked to the facts of the agreement of 8 July 2016 which at the face of it is a value determined by independent parties in an arms-length transaction.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A SA

./.

(1) B SA
(2) C S.A.
(3) D S.A.

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Frank SCHNYDER
  • Dr. Tobias BREMI

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

Representative(s) of Defendants (2) and (3):

DECISION IN FULL

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Uninvited guests during preparation of an open house day

Case No. S2016_005:
Decision of 27 June 2016 ¦ “Anordnung Beschreibung (superprovisorisch)”
Decision of 13 July 2016 ¦ “Erledigung Beschreibung”

First things first: Who are the parties?

From the wording of the requests and the feature analysis, it is clear that the patent in suit is EP 0 911 437 B1 of Lässer AG Stickmaschinen (formerly: Franz Lässer AG); see the EPO Register and Swissreg for any further details. Moreover, it is noted in the decision that the patent had been opposed by a connected undertaking of the defendant, but the opposition was dismissed and EP’437 was maintained as granted. The former opponent was Saurer Sticksysteme AG. Thus, it is reasonable to assume that the defendant is Saurer AG (again, see the summary of O2014_009 on this Blog here).

The feature analysis of claim 1 of EP’437 reads as follows:

M1: Embroidery machine, in particular a Schiffli embroidery machine, in which a mobile thread guide (17, 17′, 17″) serves as one of the stitch-forming members

M2: with a row of embroidery locations (S1, S2, S3 …) which can be brought individually into and out of operation

M3: which each comprise an individual thread guide (17, 17′, 17″), which can be brought into and out of operation

M4: with at least one drive member (11, 11′, 11″, 11″‘), with mobile bars (33, 42) for actuating embroidery members (15, 43)

M5: and with coupling members (51, 53) at these embroidery members (15, 43), which may be engaged with or disengaged from the corresponding bar (33, 42)

M6: with a switching member (71, 71′, 71″) for simultaneously bringing a plurality of embroidery members (15, 43, 89, 91) of an embroidery location (S1, S2, S3) into and out of operation

characterised in that

M7: a thread guide bar (37) is provided

M8: that the thread guide (17, 17′, 17″) comprises a thread guide lever (63, 63′, 63″) and a coupling member (69, 121, 131)

M9: that the switching member (71, 71′, 71″) comprises at least one switching rod (75, 75′, 75″) and a member (73) connected to the latter for actuating the switching rod, e.g. a cylinder (73) or motor

M10: and that at least the needle (15) and the thread guide (17, 17′, 17″) can be simultaneously switched with the member (73) for actuating the switching rod and the switching rod (75, 75′, 75″).

The invention can be more easily understood with the figures 1, 4 and 5 at hand:

The plaintiff requested preliminary measures to secure evidence; Art. 77(1) lit a PatA.

The parties had exchanged their views on whether or not a newly to be introduced machine of the defendant infringed EP’437. The machine had also been presented at a trade fair in November 2015 (most likely ITMA 2015 in Milan, November 12-19, 2015; see below). The defendant explicitly rebutted fulfilment of feature M10 — without, however, explicit acknowledgement of fulfilment of the other features M1-M9. Anyway, the FPC held that the defendant had credibly established at least fulfilment of features M1-M6 by prima facie evidence. The request for preliminary measures to secure evidence concerned the remaining features M7-M10. As to these features, the FPC held that fulfilment of feature M6-M9 also seems to be given, and that potential fulfilment of feature M10 is plausible.

In addition, the FPC held that there were further indications of an infringement: The defendant had openly presented the new machine at the trade fair, and the defendant reacted on the plaintiff’s initial inquiry with respect to the suspected infringement. Only when the plaintiff posed more critical questions, the defendant stopped any discussion and the later presentation of the machine was only ‘on invitation’ at the premises of the defendant, at the occasion of an open house day. And this is why there was special urgency: The open house day had been announced for July 1, 2016; the request for preliminary measures was received at the FPC on June 23. Moreover, the plaintiff noted that the enforcement of the measure would likely be frustrated if the defendant would be heard beforehand. The plaintiff had thus requested that the FPC orders the interim measure immediately and without hearing the opposing party. The FPC did so, and the description was executed at the premises of the defendant on June 28. The defendant later on requested that some details were blackened-out from the minutes of the description before it was made available to the plaintiff. Since these details were of no relevance for the claim features at stake, this request was allowed.

It remains to be seen what the plaintiff has learned from the description. Will the findings be the basis for yet another infringement case Lässer ./. Saurer?

WHAT’S HAPPENING ON THE MARKET

There are strong indications that Saurer’s ‘Epoca 7’ is concerned. Saurer’s press release in advance of ITMA 2015 in Milan (November 12-19, 2015) announced the introduction of the new ‘Epoca 7’ with

new technologies […] such as the individual thread guide activation, the newly developed thread delivery and […].

That pretty much resembles the suspicious wording in the invitation to the open house day on July 1, 2016, i.e. ‘individuelle, automatische Fadenleiterschaltung’. I could not find much more information on the actual configuration of this machine, but you might get a first impression from the handouts of Saurer’s press conference at ITMA 2015 (p 26):

press_conference_handout_saurer_p26_ITMA2015
Saurer Press Conference at ITMA Milan 2015 (handout, p 26)

The presentation of ‘Epoca 7’ at ITMA 2015 is also available here:

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2016_005:
Decision of 27 June 2016 ¦ “Anordnung Beschreibung (superprovisorisch)”
Decision of 13 July 2016 ¦ “Erledigung Beschreibung”

Lässer AG Stickmaschinen ./. Saurer AG

Subject(s):

  • Preliminary measures, securing of evidence / precise description
  • Fadenleiter

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Frank SCHNYDER

Reporting judge:

  • Dr. Tobias BREMI

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of claimant:

Representative(s) of defendant:

FULLTEXT OF THE DECISIONS

Decision of 27 June 2016:

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Decision of 13 July 2016:

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A heated debate over heat exchangers

Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”

This case is an assignment action of Marcel Riendeau against Zehnder Group International AG. The IP rights concerned are two European patent applications and the co-pending PCT applications, i.e.:

Back in 2009, the parties apparently entered into a cooperation based on a novel heat exchanger technology that had been invented by the plaintiff. A first patent application was filed in the name of Zehnder Verkaufs- und Verwaltungs AG — subject to final contracts to be concluded. This never happened. In the meantime, this application proceeded to grant as EP 2 618 090 B1; see the European Patent Register for any details. Interestingly, it has been assigned by Zehnder Group International AG to Westwind Ltd, the one-man business of Mr Riendeau. However, this assignment is already a story in itself: Apparently, Zehnder Verkaufs- und Verwaltungs AG first assigned the application to Marcel Riendeau with an agreement dated 5 May 2014. But later, it turned out that Zehnder Verkaufs- und Verwaltungs AG did not exist anymore at that date. Its legal successor was Zehnder Group International AG, the defendant on file.

At the technical side, the invention(s) pertain to heat exchanger elements schematically illustrated in the following figures. EP’834 and EP’836 explicitly recite polymer films being provided on the perforated plate element, while EP’090 holds that “[a]ccording to the inventions, the polymer is supplied as a dispersion”; see paragraph [0016].

The parties apparently also discussed the so-called extensions of the first patent. The importance to safeguard a filing date well before publication of the first application (EP’090) was apparently discussed, too. But the plaintiff did not trust the defendant to do so. Therefore, on 19 July 2013 he filed US 2013/269906 A1 on his own. Note that the two applications in suit were filed only later, i.e. 22 July 2013.

For the corresponding PCT applications WO’544 and WO’543 two additional inventors have been designated, i.e. defendant’s in-house patent attorney and the head of the R&D department.

This is only a rough overview of what appears to be a perfect mess. Interested in any further details? Plaintiff’s writ is available in its entirety from the EPO online files:

Download (PDF, 1.69MB)

Proceedings at the EPO are currently stayed on request of the plaintiff, in both cases.

In parallel main proceedings (O2015_009; no publication yet), plaintiff essentially requests that both patent families are to be assigned to him; and that the designations of the two additional inventors are to be withdrawn. As an interim measure, plaintiff essentially requested to impose a ban on defendant’s authority to dispose of the applications in suit.

Now, what did the defendant say? Interestingly, the decision holds that plaintiff’s detailed and well documented allegations remained essentially undisputed on the merits. The improper assignment of EP’090 did the rest to establish a certain risk / lack of due care if authority over the applications in suit remained with the defendant. Finally, the interim measures were held proportinate: defendant himself submitted that no transfer, granting of rights or amendments to the applications in suit was envisaged. However, no unconditional and binding declaration was submitted. Consequently, interim measures were granted as requested.

This decision in summary proceedings has already become final.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”

Marcel RIENDEAU ./. Zehnder Group International AG

Subject(s):

  • Assignment action / Interim measures

Board of Judges:

  • Dr. Dieter BRÄNDLE (President; Single Judge)
  • Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— DECISION IN FULL  —

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Gilead ./. AbbVie: Court ban partially lifted

Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

This is further to an earlier post in this matter.

Gilead's Harvoni
Gilead’s Harvoni

In brief, both the plaintiff Gilead Pharmasset LLC and the defendant AbbVie Inc. had filed patent applications on a combination of sofosbuvir and ledipasvir (marketed by Gilead under the tradename Harvoni), and Gilead had lodged an assignment action against AbbVie in main proceedings (O2014_013).  A block of the patent register had been ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.

In the meantime, the defendant was belatedly heard and the FPC now finally decided on the requested interim measures (Art. 265(2) CPC). And: The interim measures were upheld to a large extent, but examination and grant proceedings may now continue. Still, it will be highly interesting to see how the case will be decided on the merits in co-pending main proceedings.

However, also the present decision has some interesting procedural implications:

i)  SUBSTANTIATION BY REFERENCE TO WRIT

The plaintiff had filed the assignment action in main proceedings on the very same day as the request for interim measures. In order to avoid unnecessary repetition in the substantiation of the request for interim measures, the respective parts of the writ were incorporated by reference. The defendant argued that this was inadmissible. And indeed, the FPC held that global references to other documents are regularly not sufficient. But in the present matter, it was. The underlying facts in both proceedings are the same and the plaintiff’s allegations are thus evident. Under these circumstances, it would be an excessive formalism to insist on a complete repetition in summary proceedings.

ii)  UNCONDITIONAL RIGHT TO REPLY IN SUMMARY PROCEEDINGS

The defendant had filed his reply to the request for interim measures on December 22, 2014. The FPC then informed the parties that an exchange of further written submissions is dispensed with. In addition, the plaintiff was informed that any remarks on the defendant’s reply would have to be submitted in due course, and the FPC further held that remarks filed by no later than January 19, 2015 would be considered timely filed. Apparently, the plaintiff then filed very extensive remarks, along with two folders of exhibits. The defendant refrained from making any further remarks on the merits, but essentially argued that the new allegations were to be ignored by the court.

The FPC held that the plaintiff’s submission of January 2015 is to be considered as a submission made under the condition of the unconditional right to reply. With reference to the decision 4A_815/2014 (r. 3.2) of the Supreme Court, the FPC clarified that this decision has not ruled out submissions under the unconditional right to reply in summary proceedings, but rather only relativised its scope. Anyhow, the plaintiff’s submission was only considered inasmuch as it was occasioned by the defendant’s reply (analogous to BGE 4A_487/2014, r. 1.2.4).

iii)  BELATED SUBSTANTIATION OF A NOT EASILY REPARABLE HARM

Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). The plaintiff had argued in the initial request that three potential actions of the defendant could cause an irreparable harm, i.e. (1) an assignment of the patent applications to a third party; (2) the granting of rights (licences or pledge); and (3) changes to the contents of the applications (Art. 51 and 64 PatR).

However, the plaintiff was silent on a not easily reparable harm that could come along with a continuation of the examination and grant procedure as such. The FPC took note that the plaintiff presented arguments in this respect for the first time only in the submission of January 19, 2015. But the FPC held that this was belated and did not consider those arguments any further.

In sum, the FPC thus partially lifted the ban on AbbVie’s patent applications, and the examination and grant proceedings of CH 707 029 and CH 707 030 may now continue. As to the remaining potential actions (1)-(3) outlined above, the defendant basically accepted the request for interim measures: The defendant confirmed to the court that he did not even think of any of these actions. Thus, the FPC upheld the interim measures to that extent.

iv)  AMOUNT IN DISPUTE

The court fee depends on the amount in dispute. Contrary to Art. 221(1) lit. c / Art. 219 CPC the plaintiff did not indicate the amount in dispute for the summary proceedings. In main proceedings, the plaintiff estimated the amount in dispute to “exceeding CHF 1m”. The defendant estimated the amount in dispute (for the main proceedings) to “exceeding CHF 10m”. All this did not help much to figure out the actual amount in dispute in summary proceedings. However, the defendant had requested a security of CHF 5m in case the ban with respect to the examination and grant proceedings would have been upheld. The FPC took this as a sufficient indication of the amount in dispute and thus fixed it to CHF 5m (BGE 92 II 62, r. 3). This results in a court fee of CHF 30’000,– (which is moderate in view of the value in dispute; see CostR-PatC), provisionally borne by the plaintiff (still subject to the outcome in main proceedings).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_008 ¦ Decision of 04 February 2015 ¦ “Begründung Massnahmebegehren unter Bezugnahme auf Klagebegründung im ordentlichen Verfahren; unbedingtes Replikrecht im Massnahmeverfahren; Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

Gilead Pharmasset LLC ./. AbbVie Inc.

Subject(s):

  • Interim measures without hearing the defendant
  • Interim measures
  • Transfer of patent application

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

Download (PDF, 244KB)

Request for interim injunctive relief dismissed in view of nullity decisions in other European jurisdictions

Case No. S2014_001 ¦ Decision of 11 February 2015 ¦ “Vorsorgliche Massnahmen; Bedeutung ausländischer Nichtigkeitsurteile für die Glaubhaftmachung der Nichtigkeit des Streitpatents”

— THE DECISION IN A NUTSHELL —

AstraZeneca’s patent on an extended release formulation of quetiapine (Seroquel®) is heavily litigated in many countries. The FPC now dismissed AZ’s request for interim injunctive relief, essentially on the basis of parallel decisions in various European jurisdictions that held the patent invalid for lack of an inventive step.

— THE DECISION IN MORE DETAIL —

This case is all about 2-{2-[4-(Dibenzo[b,f][1,4]thiazepin-11-yl)-1-piperazinyl]ethoxy}ethanol.

Quetiapine

Getting confused? No worries.

This molecule is better known as quetiapine (international non-proprietary name, INN) or under the tradename Seroquel® of AstraZeneca. It is an atypical antipsychotic approved for the treatment of schizophrenia, bipolar disorder, and along with an antidepressant to treat major depressive disorder.

Seroquel is still a blockbuster drug, even though revenues have drastically declined since 2011 (see below). It was first approved by the FDA in 1997, and today generics are already available.

The plaintiff / patentee had requested interim injunctive relief about one year ago, based on EP 0 907 364 B1; the underlying PCT application is WO 97/45124 A1. The patent on quetiapine as such (EP 0 240 228 B1) has already lapsed. Note that EP 0 907 364 B1 only protects an extended release formulation thereof. Independent claim 1 at stake reads as follows:

A sustained release formulation comprising a gelling agent and [quetiapine] or a pharmaceutically acceptable salt thereof, together with one or more pharmaceutically acceptable excipients.

It was undisputed that the formulations marketed by the defendant contained — besides quetiapine — lactose and Viscarin GP 209. However, while the plaintiff / patentee argued that Viscarin GP 209 was a gelling agent, this was disputed by the defendant. Further, the defendant alleged that the patent-in-suit was invalid for various reasons: Insufficient disclosure of the invention; lack of novelty or, at least, lack of an inventive step.

In summary proceedings, the standard of proof is only prima facie evidence; see Art. 261(1) CPC, Art. 77 PatA. This also applies to a defendant’s plea in defense (see e.g. BGE 132 III 83, r. 3.2; BGE 103 II 287, r. 2; BGE 4P.228/1996). The national parts of EP 0 907 364 B1 had been revoked for lack of an inventive step in already five jurisdictions: Germany, the United Kingdom, the Netherlands, Spain and Italy. Only a decision of the Commercial Court of Vienna (Austria) held that the claimed subject matter involved an inventive step. I have collected copies of some of these decisions as follows: 3Ni 43/10 of the Federal Patent Court of Germany (also an inofficial EN translation is available) and the second instance decision X ZR 41/13 of the Federal Supreme Court of Germany; the decision of the High Court of Justice and the second instance decision of the Court of Appeal in the United Kingdom; the decision of the Appeal Court The Hague (Netherlands).

With reference to the decision 4P.89/2004 (r. 3.1-3.2) of the Supreme Court, the FPC unequivocally held that

[f]or the sole reason that the patent had been declared invalid by five European courts, the defendant’s plea for nullity is credible. […] Accordingly, the request for interim measures would have to be readily dismissed, […]. Nevertheless, in terms of a diligent assessement, an opinion of the reporting judge […] was obtained.

The FPC held that the alleged insufficiency of disclosure of the invention in the patent-in-suit was unfounded,

[…] at least to the extent of the specific embodiments disclosed in the patent-in-suit. However, this does not mean that the invention is workable over the whole scope of the claim, as required by Art. 83 EPC.

However, the FPC did not expand further on the alleged insufficiency of disclosure, but rather exhaustively discussed the parallel European decisions referred to above. The FPC held that the five decisions denying an inventive step were convincing, while the only dissenting decision of the Commercial Court of Vienna was held to be not conclusive.

In brief, the Federal Patent Court of Germany had found that the claimed subject matter did not involve an inventive step, starting from O. Gefvert et al.: “Time course for dopamine and serotonin receptor occupancy in the brain of schizophrenic patients following dosing with 150 mg Seroquel™ tid” (Abstract P-4-65 in European Neuropsychopharmacology 09/1995; 5(3):347) in combination with a press release of Eurand America, Inc. (“Eurand America, Inc. Signs Development Agreement with Zeneca Pharmaceuticals” (October 2, 1995)), in further view of Aulton, M.E.: “Pharmaceutics. The Science of Dosage Form Design” (1988) and US 4,389,393 A. This finding was confirmed by the Federal Supreme Court of Germany. The other courts apparently cited the same or similar prior art in support of their findings of lack of an inventive step; the Appeal Court The Hague further cited Hirsch, S.R.: “A new Atypical Antipsychotic Drug” (British Journal of Psychiatry (A22), May 1996). Only the Commercial Court Vienna apparently held that the “once-a-day” indication in the Eurand press release did not prompt the person of routine skill in the art towards an extended release formulation.

Be that as it may, the FPC held that the defendant had credibly established a lack of inventive step by prima facie evidence on the basis of the parallel European decisions.

The plaintiff had submitted amended / restricted sets of claims of the patent in suit, as auxiliary requests. However, the amendments did not revert the FPC’s findings re inventive step. The amendments related to the amount of the gelling agent to be added to the formulation, but no non-obvious effect of the amounts had been alleged by the plaintiff. The FPC could not spot any such effect, either. Therefore, the request for interim injunctive relief was dismissed.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_001 ¦ Decision of 11 February 2015 ¦ “Vorsorgliche Massnahmen; Bedeutung ausländischer Nichtigkeitsurteile für die Glaubhaftmachung der Nichtigkeit des Streitpatents”

AstraZeneca AB ./. (n/a)

Subject(s):

  • Infringement
  • Interim measures

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)
  • Dr. Erich WÄCKERLIN (Reporting Judge)
  • Prisca von BALLMOOS (Judge)
  • Susanne ANDERHALDEN (First Court Clerk)

Representative(s) of Plaintiff:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)
  • Dr. Simon HOLZER (MLL)

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

Download (PDF, 339KB)

Further insight into the requirements for an ex-parte interim injunction

Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”

— THE DECISION IN A NUTSHELL —

If an ex parte interim injunction is requested, the FPC will — to a certain extent — anticipate potential counter-arguments of the defendant ex officio, and evaluate their cogency. Novelty and involvement of an inventive step was not offhandedly assumed for a Swiss patent that is unexamined on the merits, since (i) the IPRP of the underlying PCT application denied novelty; and (ii) counter-arguments of the plaintiff / patentee re novelty and inventive step were not found convincing. Consequently, the interim injunction was not granted ex parte.

— THE DECISION IN MORE DETAIL —

As a general rule, Art. 261(1) CPC provides that a court shall order interim measures required provided the applicant shows credibly that: (a.) a right to which he or she is entitled has been violated or a violation is anticipated; and (b.) the violation threatens to cause not easily reparable harm to the applicant.

While interim measures are regularly dealt with in inter partes proceedings, ex parte interim measures may also be granted according to Art. 265 CPC: In cases of special urgency, and in particular where there is a risk that the enforcement of the measure will be frustrated, the court may order the interim measure immediately and without hearing the opposing party. This is frequently referred to as a super-provisional measure.

Thus, the law provides for such super-provisional measures. And the FPC has already granted a few of them. However, in none of these cases super-provisional injunctive relief was granted. And the present case it not (yet) the one that got away. But it provides further guidance on how the FPC actually deals with such requests.

It is common sense that the court has to examine a request for super-provisional measures circumspectly: The court must not offhandedly infer the credibility of the (qualified) endangering, but rather has to request proof, besides a plausible presentation of the facts (see p. 7536, penultimate para. of the dispatch of the Federal Council on the Civil Procedure Code).

However, what does this mean in patent litigation matters?

The FPC now took the opportunity to further shape the actual requirements in a hands-on example. Let’s have a brief look at the technical matter at stake. Even though it is not explicitly mentioned in the decision, it is clear that CH 708 247 B1 and WO 2013/174738 A1 are at stake. For further bibliographic details, please see Swissreg with regard to the Swiss patent and Patentscope with regard to the PCT application, respectively.

The PCT application had been nationalised in Switzerland and proceeded to grant, but without any examination on the merits (Art. 59(4) PatA). Therefore, the FPC must not offhandedly assume validity of the Swiss patent if ex parte interim measures are requested. Rather, further indication in support of the validity of the Swiss patent is necessary, such as e.g. an official search report or an international preliminary report on patentability (IPRP); see e.g. S2013_005, r. 3. Here, an IPRP was indeed available — but novelty was explicitly denied therein. Note that the claims of the Swiss patent and the PCT application are identical. Of course, the plaintiff did not agree with the findings of the IPRP and presented arguments in support of novelty over all documents cited in the IPRP. However, the FPC concluded that the findings of the IPRP re lack of novelty were prima facie not refuted. But even if the FPC would have followed the plaintiff’s reasoning re novelty, the plaintiff apparently failed to present convincing arguments re inventive step. In this regard, the FPC again reiterated that it is essential to define the person of skill in the art whenever inventive merit is being discussed. Moreover, it has to be shown why the person of skill in the art would not have arrived at the claimed solution, e.g. on the basis of the problem-and-solution approach established in EPO proceedings. The FPC briefly assessed the potential involvement of an inventive step and concluded that obviousness over D1 (EP 2 248 485 A1, in particular Fig. 5, 6 and 8) could not be ruled out by prima facie evidence, in further view of D3 (WO 2011/027229 A2).

My personal take-away message from the decision is the following:

To a certain extent, the court thus has to anticipate potential counter-arguments of the defendant ex officio, and to evaluate their cogency.

Evidently, the hurdle for an ex parte interim injunction is high — but not insurmountable. The FPC explicitly notes what has been missing here:

For an ex parte interim injunction to be granted, and if a negative IPRP has been issued, the FPC needs to be in a position to conclude prima facie and at least on the basis of the plaintiff’s submission that novelty and inventive step is nevertheless given.

This was not the case here. The request for ex parte interim injunctive relief was dismissed and the defendant was given the opportunity to reply.

— WHAT’S UP ON THE MARKET —

Patentees are Martin BÄCHLER and Jürg BÄCHLER, who are members of the board of directors of Valoc AG. In my perception, the retention inserts for the fixation of Valoc’s Novaloc™ matrices are products according to the patent in suit.

For more information on this system, please revert to the product brochure and the flyer. To better understand mounting and removal of the retention insert, the following video may help:

There is no indication at all in the decision as to the identity of the defendant.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2015_001 ¦ Decision of 09 February 2015 ¦ “Abweisung superprovisorischer Massnahmen; Anforderung an Gesuch um superprovisorische Massnahmen bei negativem vorläufigen internationalen Prüfungsbericht”

(not identified) ./. (not identified)

Subject(s):

  • Infringement
  • Interim measures without hearing the defendant
  • Dental retention insert

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI
  • Dr. Kurt SUTTER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (n/a)

— FULL TEXT OF THE DECISION —

Download (PDF, 824KB)

Litigation on combination of sofosbuvir and ledipasvir reaches Switzerland

Gilead Pharmasset LLC ./. Abbvie Inc.

Case No. S2014_008 ¦ Decision of 28 October 2014 ¦ “Superprovisorische Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

— THE DECISION IN A NUTSHELL —

Both Gilead Pharmasset LLC and AbbVie Inc. hold patent applications on the combination of the sofosbuvir and ledipasvir for the treatment of hepatitis C. This combination is marketed by Gilead under the tradename Harvoni™. Gilead has sued AbbVie for assignment of their Swiss patent applications. In first place, a block of the register for these patent application was ordered as an interim measure.

— THE DECISION IN MORE DETAIL —

This decision pertains to new pharmaceuticals for the treatment of hepatitis C.

1.  BACKGROUND

Undisputedly, sofosbuvir has been a breakthrough in the treatment of this widespread disease. It is a ribonucleotide analog inhibitor of the RNA-dependent RNA polymerase of hepatitis C virus (HCV).

Sofosbuvir
Sofosbuvir (PSI-7977)

Sofosbuvir causes chain termination by competing at the triphosphate level with natural nucleotides for incorporation into elongating RNA. The triphosphate serves as a defective substrate for the NS5B protein (which is the viral RNA polymerase), and thus acts as an inhibitor of viral RNA synthesis; see Antimicrob Agents Chemother. 2014 Jul; 58(7): 3636-45.

Way of acgtion of sofosbuvir
Way of action of sofosbuvir (by Anypodetos, via Wikimedia Commons); click on image to enlarge.

Sofosbuvir has received the FDA’s Breakthrough Therapy Designation and has been marketed since 2013. Compared to previous treatments, sofosbuvir-based regimens are reported to provide a higher cure rate, fewer side effects, and a two- to four-fold reduced duration of therapy.

In October 2014 a combination of sofosbuvir with the viral NS5A inhibitor ledipasvir was approved by the FDA.

Ledipasvir
Ledipasvir (GS-5885)

The combination of sofosbuvir and ledipasvir is marketed by Gilead under the tradename Harvoni™; see also the Harvoni™ patient information. It is reported to provide high cure rates in people infected with genotype 1 (the most common subtype in the U.S., Japan, and much of Europe).

Principal display panel of Harvoni™
Principal display panel of Harvoni™; click on image to enlarge.

Well, and here we are at the very core of this dispute: The rights in the invention of a combination of sofosbuvir and ledipasvir. Some indication of this issue is already contained in Thomson Reuters’ report to the WHO on the patent situation of sofosbuvir (see Patent 2, p. 16-17), the respective report on ledipasvir (see the Note in the Summary on p. 11) and newsfeeds such as e.g. Knowledge Ecology International or Biospace.

2.  WHO ACTUALLY INVENTED IT?

This question will be dealt with in co-pending main proceedings (O2014_013). Both parties had filed patent applications on this combination of drugs. The present decision only deals with a block on the register as an interim measure (see below). However, the plaintiff exhaustively argued on the merits of his rights in the invention, in order to get the block on the register issued. And, indeed, it was issued even without hearing the defendant beforehand.

The plaintiff essentially argued as follows:

As the legal successor of Gilead Sciences, Inc., Gilead Pharmasset LLC owns all rights and interest in this invention that is subject of patent applications (for the assignment see the request for a change under R. 92bis PCT and the corresponding notification issued by the WIPO). An outline of this patent family is shown below. Claim 3 of WO 2013/040492 A2 is directed to the combination of sofosbuvir (referred to as “compound 10”) and ledipasvir (referred to as “compound 6”).

Priority applications filed in the U.S.:
#1
Sep 16, 2011
61/535,885
#2
Nov 18, 2011
61/561,753
PCT application claiming these priorities:
filed
Sep 14, 2012
PCT/US2012/055621
pub’d
Mar 21, 2013
WO 2013/040492 A2

Gilead Sciences, Inc. had acquired Pharmasset LLC in January 2012, incl. the rights to sofosbuvir (PSI-7977). On the other hand, ledipasvir had been developed in-house at Gilead. Gilead’s first priority application had been filed on September 16, 2011 (at a time when a takeover bid for Pharmasset LLC had already been placed), and this application already included the combination of sofosbuvir and ledipasvir (GS-5885) for the treatment of HCV (in particular of genotype 1) for twelve weeks, with or without the further antiviral agent ribavirin, but in any case without interferon. Thus, the plaintiff had been in possession of the invention already on September 16, 2011.

The defendant’s patent applications are outlined below, in chronological order. The two Swiss patent applications that are litigated here are given in the last line. There are two series of applications, one with and one without the yet further antiviral agent ribavirin.

w ribavirin
w/o ribavirin
Priority applications filed in the U.S.:
#1
Oct 21, 2011
61/550,352
61/550,360
#2
Nov 21, 2011
61/562,181
61/562,176
#3
Jan 17, 2012
61/587,225
61/587,197
#4
Feb 17, 2012
61/600,276
61/600,468
#5
Apr 03, 2012
61/619,870
61/619,883
#6
Jun 06, 2012
61/656,251
61/656,253
#7
Oct 10, 2012
61/711,830
61/711,793
PCT applications claiming these priorities:
filed
Oct 19, 2012
PCT/US2012/061075
PCT/US2012/061085
pub’d
Apr 25, 2013
WO 2013/059630 A1
WO 2013/059638 A1
Nationalised in Switzerland:
nat’d
Jan 13, 2014
CH 707 029
CH 707 030

As can be seen, the defendant had filed the first priority application on October 21, 2011, i.e. only after the plaintiff’s first priority application of September 16, 2011. Ledipasvir as such is not referred to by the defendant in his first priority application, but rather only the identifier GS-5885. Neither the chemical structure is given, nor the specific combination of GS-5885 and sofosbuvir. The plaintiff points at two peculiarities in the subsequent time line of the defendant’s priority filings:

First, the plaintiff had mentioned the combination of GS-5885 and sofosbuvir for the first time in an investor phone conference on February 02, 2012. However, the structure of GS-5885 had not been made publicly available. About two weeks later, the fourth priority applications had been filed and disclose the specific combination of sofosbuvir and GS-5885 for the first time in the series of priority applications.

Second, only the sixth priority applications of the defendant (filed June 06, 2012) disclose the structure of ledipasvir / GS-5885. This is about six weeks after the plaintiff had made the structure of GS-5885 publicly available for the first time on April 18, 2012 at the 25th International Conference on Antiviral Research in Sapporo, Japan. The defendant does not rely on clinical data in the patent applications, but rather used computer models to predict the advantageous combinations of drugs.

3.  NOW, WHAT HAS BEEN DECIDED?

Both parties are domiciled in the U.S.; competency for interim measures is thus governed by Art. 10 IPRG. The requested interim measures aim to preserve the status quo for as long as the assignment suit has not yet been decided in co-pending main proceedings (O2014_013). In main proceedings, the courts of Switzerland have jurisdiction (Art. 109(1) IPRG; Art. 29 PatA). Moreover, the requested interim measures (block of the register) are to be executed in Switzerland. Competency of the FPC is thus given, and Swiss law is to be applied (Art. 110(1) IPRG).

Interim measures are ordered when the plaintiff credibly shows that a) a right to which he is entitled has been violated or a violation is anticipated; and the violation threatens to cause not easily reparable harm to the plaintiff (Art. 261(1) CPC). Prima facie evidence is sufficient. Further, a certain urgency must be given and the requested interim measures must be proportinate. The FPC held that all these prerequisites were fulfilled in the present matter. The block of the register was ordered without hearing the defendant beforehand, to prevent that the enforcement might be jeopardized.

It remains to be seen how the defendant defeats the allegations. The defendant will now belatedly be heard and the FPC will then finally decide on the requested interim measures (Art. 265(2) CPC).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_008 ¦ Decision of 28 October 2014 ¦ “Superprovisorische Anordnung einer Verfügungsbeschränkung im Patentregister (Registersperre)”

Gilead Pharmasset LLC ./. AbbVie Inc.

Subject(s):

  • Interim measures without hearing the defendant
  • Transfer of patent application

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • none yet

— FULL TEXT OF THE DECISION —

Download (PDF, 210KB)

This milk frother won’t leave you cold

Case No. S2014_006 ¦ Decision of 06 October 2014 ¦ “Kaltmilchschäumer: Gutheissung vorsorglicher Massnahmen (Patentverletzung); Anforderungen Glaubhaftmachung offenkundige Vorbenutzung; Anforderungen Sicherheitsleistung”

— IN A NUTSHELL —

A prior use as prima facie evidence in a plea of nullity is frequently cumbersome — and was unsuccessful here. The prior use had allegedly occured already more than 10 years ago. The defendant did not provide a binding cease and desist declaration; preliminary injunctive relief was granted. It was not even made conditional on the payment of a security by the plaintiff since the defendant had repeatedly argued that the allegedly infringing machines were no longer marketed anyhow. Thus, the FPC did not anticipate that the measures may cause loss or damage to the defendant (Art. 264 CPC).

— IN MORE DETAIL —

Milk frothers are frequently litigated in Switzerland. You might perhaps recall the decisions Milchschäumer and Milchschäumer II a few years ago. The present case is apparently not related to the old ones, but again pertains to a milk frother. Fortunately, catchwords are not confusingly similar: This time, it’s a milk frother for cold milk (Kaltmilchschäumer).

i) BACKGROUND OF THE CASE

Latte macchiato, with milk froth toppingOne of the plaintiffs is the patentee of both patents in suit, i.e. a Swiss patent and a European patent. The other plaintiff is a member of the same group of companies. However, the parties are anonymized in the decision.

Nevertheless, from the wording of the requests and the technical details given in the decision, it is evident that CH 707 091 B1 and EP 2 120 656 B1 are the patents in suit. The patentee is Steiner AG Weggis. A connected undertaking of Steiner AG Weggis is Thermoplan AG — quite likely the second plaintiff. Never heard? Thermoplan manufactures the machines that Bloomberg recently referred to as Starbucks’ secret weapon.

Opposition/appeal proceedings are currently pending against EP 2 120 656 B1. The online file wrapper at the EPO is insightful: Franke Coffee Systems GmbH of Germany intervened as a party (under Art. 105 EPC), since proceedings for infringement of that patent had been instituted against them. In the intervention, it is referred to two summary proceedings at the regional court of Düsseldorf (Germany), i.e. 4a O 52/14 and 4a O 81/14 (the fulltext of the intervention is available here). No further details on these proceedings are available to date, but the present decision of the FPC also refers to two “corresponding decisions in summary proceedings” at the regional court of Düsseldorf on the German part the patent in suit. There are some further hints in the decision; in sum, it is abundantly clear to me that Franke Coffee Systems is involved as the defendant (i.e. the Swiss member of the Franke group of companies, Franke Kaffeemaschinen AG).

The European patent was maintained in slightly amended form by an Opposition Division (OD) of the EPO; see the Druckexemplar of the interlocutory decision of the OD. Appeal proceedings are still pending. The independent claims as maintained by the OD read as follows (markup vis-à-vis EP 2 120 656 B1 as granted:

1. A method for the production of milk foam or milk-based drinks, wherein milk is sucked with a pump (1) out of a container (3, 3′) and conveyed to an outlet (11′), air or a gas being added to the milk, whereby the milk/air mixture is processed in a cold or hot state into milk foam and conveyed as cold or hot milk foam to the outlet (11′), characterised in that
the milk or the milk/air mixture, which is sucked by the pump (1) und mixed with the air respectively the gas, is selectively conveyed via a throttle point (12) directly or via a flow heater (16) to the outlet (11′).

2. An apparatus for implementing the method according to claim 1, having a pump (1) sucking the milk from a container (3, 3′) via a suction line (2), having an outlet line (10) leading from the pump (1) to an outlet (11′), having an air supply line (5) opening out into the suction line (2), characterised in that the outlet line (10) has two parallel sections (10a, 10b), which can be enabled selectively by means of a valve (15) between the throttle point (12) and the outlet (11′), a flow heater (16) being assigned to one of these outlet line sections.

ii) WORDING OF THE REQUESTS

The proper wording of requests for injunctive relief is a matter of ongoing discussion amongst practitioners. Swiss case law strictly follows the rule that a request must be precise enough to allow enforcement of the prohibition by mere factual inspection; see e.g. this Blog here (with further reference). The present request for preliminary injunctive relief is quite lengthy. But it is a good example of a request that makes use of photographic illustrations of the infringing features to meet this goal (in German language, but you will get the idea):

Request for preliminary injunctive relief, with photographic illustration of features

Moreover, the request did not reach beyond the scope of the patents. Consequently, the FPC held that the wording of the requests was formally allowable.

iii) CLAIM CONSTRUCTION

Construction of the term “throttle point (12)” was under dispute. Clearly, this throttle point converts the milk/air mixture to a milk foam. In a function-oriented construction of the term, the FPC first clarified the terms “milk/air mixture” and “milk foam”. There is neither a precise definition in the patents nor have the parties provided any commonly accepted definition. A Ph.D. thesis of Katja BORCHERDING was not held sufficient since it only relied on a single reference for an amount of 0.5-0.97 vol.% of air in a milk foam. The term “milk/air mixture” was thus construed very broadly as “any mixture of air and milk”, thus also encompassing “milk foam”.

As to the contribution of the throttle point, the FPC held that this is any kind of bottleneck that at least contributes to the formation of a milk foam.

iv) ALLEGEDLY INFRINGING EMBODIMENT NO LONGER IN USE, PRELIMINARY INJUNCTION ISSUED ANYHOW: HOW COMES?

The defendant argued that the allegedly infringing machine had only been produced and sold from January 2013 to February 2014. It had then been replaced by a new machine with a different (allegedly non-infringing) milk frother. However, the defendant did not provide any arguments as to why the contested embodiment would not infringe the patents in suit. The FPC considered the legitimate interest of the plaintiff ex officio (Art. 59 CPC). A danger of repetition of the alleged and undisputed infrigement remained since the defendant did not declare to cease and desist; cf. BGE 124 III 72, r. 2a and BGE 128 III 96, r. 2e. Moreover, validity of the patents was still disputed, and even the allegedly non-infringing machine was illustrated with a diagram that still carried the name of the contested device. In sum, the FPC held that the legitimate interest in preliminary injunctive relief still remained.

A threat of a not easily reparable harm was acknowledged for the reason alone that it would be difficult for the plaintiff to later on prove the causality of the harm to have occured from the infringement. Urgency of the matter was not compromised by the fact that the plaintiff had awaited the outcome of the decision of the OD of the EPO; this was rather appreciated as prudent by the FPC.

v) PRIOR USE: REQUIREMENT OF PRIMA FACIE EVIDENCE

The defendant argued for nullity of the patents in suit. Besides some further prior art documents (see below), nullity was argued in view of a prior use “Esprè Magic”. This prior use had been documented in corresponding opposition proceedings before the EPO with the following documents:

  • B3 (invoice)
  • B4 (flyer)
  • B5 (technical assessment by patent attorney Philipp RÜFENACHT)
  • B6 (list of exhibitors)
  • B7 (exhibition flyer)

Note that the prior use had occured already more than ten years ago. Two affidavits in support of the prior use and the technical details thereof were put on file by the defendant when the plaintiff had disputed the public availability and the relevant technical details of “Esprè Magic”. These affidavits were not supported with further documentary material. Moreover, the affidavits were not free from inconsistencies. Thus, the FPC was reluctant in considering these declarations. Apparently, the Regional Court of Düsseldorf came to the same conclusion in parallel proceedings in Germany. Moreover, it was not only that the FPC had doubts as to whether a prior use had actually occured or not. Even the technical details of the alleged prior use were held to be not sufficiently clarified by prima facie evidence to be considered novelty-destroying for the patents in suit.

vi) FURTHER PRIOR ART DOCUMENTS

Novelty of claim 1 of CH 707 091 B1 over R4 (i.e. EP 0 485 350 A1) was disputed. The decision highlights two decisive issues: First, the term “throttle point (12)” was construed very broadly (cf. above), and thus the bottleneck in conduit 6 of R4 was identified as to fulfil this feature. Second, it was required that the milk foam be conveyed to the outlet in a cold state. R4 discloses that the conduits 3 and 6 can be held at room temperature, thus with inoperative heating elements 10. Accordingly, the FPC held that a prima facie lack of novelty of claim 1 of CH 707 091 B1 was given.

To the contrary, it was held that no prima facie case of lack of novelty or inventive step of claims 1 and 2 of EP 2 120 656 B1 had been established. The FPC essentially followed the reasoning of the OD of the EPO in consideration of R4 and R6 (i.e. US 6,192,785 B1).

vii) SECURITY

The FPC could have made the interim measure conditional on the payment of security by the plaintiff, but (only) if it had been anticipated that the measures may cause loss or damage to the defendant (Art. 264 CPC). The defendant requested a security of CHF 2’000’000,–, but the FPC stressed that the defendant had repeatedly argued that the allegedly infringing machines are no longer marketed anyhow. Therefore, one would not anticipate that the preliminary injunction could cause loss or damage to the defendant.

viii) WHAT’S UP ON THE MARKET

The allegedly infringing machines are not identified in the decision. But in the meantime it has become a rubber-stamping excercise for me to dig a bit deeper into what is actually happening on the market. I have learned from followers of this blog that this is highly appreciated. So, these are the snippets of information that I could gather from the internet:

The world premiere of the Franke FoamMaster™ FM800 (flyer dated 12/12; CH and DE) was in early 2013 in Switzerland (see gourmet 4/13). Consequently, this machine was also promoted on the Franke website back in 2013 as the new premium device:

Franke Website (CH): Screenshot of July 30, 2014
Franke Website (CH): Screenshot of July 30, 2013

However, the FM800 is no longer promoted on the Franke Website for Switzerland (see screenshot of August 13, 2014 below). The same holds true for the Website for Germany. No signs of the FM800 machine anymore. Seemingly, the FM800 has been replaced by a machine FM750 (flyer dated 07/14; CH):

Franke Website (CH): Screenshot of August 12, 2014
Franke Website (CH): Screenshot of August 13, 2014

Thus, the FM800 would perfectly match the bibliographic criteria of the allegedly infringing machine at stake in the present decision. I have found a detailed technical booklet on the FM800 machine on the internet, with a water flow diagram (Wasserlaufschema) on p. 320:

water flow diagram

This illustration looks strikingly similar to the one reproduced on p. 6 of the decision, but details are scarcely visible in the decision. Pump P100 and restrictor BL0.8 are referred to in the decision, and are also visible on the right side of the above water flow diagram. In my personal opinion, all these are strong technical indications towards the FM800 machine.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_006 ¦ Decision of 06 October 2014 ¦ “Kaltmilchschäumer: Gutheissung vorsorglicher Massnahmen (Patentverletzung); Anforderungen Glaubhaftmachung offenkundige Vorbenutzung; Anforderungen Sicherheitsleistung”

(not identified) ./. (not identified)

Subject(s):

  • Patent infringement
  • Preliminary measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Dr. Herbert LAEDERACH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (First Court Clerk)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Lorenza FERRARI HOFER (Pestalozzi)
  • Dr. Michael REINLE (Pestalozzi)
  • Dr. Philipp RÜFENACHT (Keller), assisting in patent matters

— FULL TEXT OF THE DECISION —

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Precautionary taking of evidence: Forensic expert opinion established

Case No. S2013_007 ¦ Decision of 20 June 2014 ¦ “Vorsorgliche Massnahme / Vorsorgliche Beweisführung (Gutachten) gutgeheissen”

— IN A NUTSHELL —

The parties were in dispute about the right to an invention. The plaintiff had presented the invention to the defendant, but the defendant alleged that he had already been in possession of this invention beforehand. Certain documents of the defendant with handwritten elements were key. The plaintiff presumed that the defendant had manipulated these documents and requested precautionary taking of evidence, i.e. that a forensic expert opinion be established. The defendant collaborated, provided the documents without even having been orderd to do so. A forensic expert opinion was established accordingly.

— IN MORE DETAIL —

According to the Swiss Code of Obligations (Art. 332E), inventions produced by an employee  in the course of his work for the employer and in performance of his contractual obligations belong to the employer, whether or not they may be protected. The plaintiff alleged that he had presented one of his employee’s invention to the defendant, and that the defendant had subsequently applied for a Swiss patent application and a utility model in Germany, in his own name. The defendant alleged that he had been in possession of the invention before it had been presented to him by the plaintiff. In this respect, the defendant referred to technical documents with handwritten annotations in support of his allegation. The plaintiff however presumed that the documents had been manipulated.

In order to substantiate his suspicion, the plaintiff had requested precautionary taking of evidence (Art. 158(1) lit. b CPC), namely that a forensic expert opinion of the documents at stake be obtained. Moreover, the plaintiff  had requested that the defendant be obliged to not allow the Swiss patent application and the German utility model to lapse, without prior hearing of the defendant. The FPC did not follow the latter request but rather invited the defendant to provide his statement of defence. With his statement of defence, the defendant did not object to a forensic expert opinion being obtained. Suprisingly, the defendant even provided the respective documents without having yet been ordered to do so.

Consequently, the FPC obliged the plaintiff to provide a security of CHF 5000,– for the expert opinion, and on 02 September 2014 the opinion was requested from the Forensic Institute Zurich. Only about five months later, the defendant was ordered to not allow the Swiss patent application and the German utility model to lapse. Shortly thereafter, the parties were provided with the forensic expert opinion in early April 2014. Precautionary taking of evidence was thus concluded and proceedings were dismissed accordingly. The FPC set a deadline of 24 July 2014 for the plaintiff to file the main action, subject to the ordered measure (with respect to the Swiss patent application and the German utility model, see above) becoming automatically ineffective in the event of default; Art. 263 CPC.

Based on a value in dispute of CHF 100’000,–, court fees were set to CHF 5’000,–. The final costs for the forensic expert opinion were CHF 4’980,–.

Apparently, the defendant had not been professionally represented in these proceedings. Party costs do only include reasonable compensation for personal efforts in “justified cases”; Art. 95(3) lit. c CPC. This was not held to be the case here, since neither a loss of wages nor a highly complicated case or a very high value in dispute had been at stake. No party compensation was thus awarded to the defendant.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2013_007 ¦ Decision of 20 June 2014 ¦ “Vorsorgliche Massnahme / Vorsorgliche Beweisführung (Gutachten) gutgeheissen”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence
  • Interim measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

  • Dr. Hanspeter GEISSMANN (Geissmann)
  • Dr. Peter STEINEGGER (SBMP)

Representative(s) of Defendant:

  • (none)

— FULL TEXT OF THE DECISION —

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