Case No. O2018_004 | Hearing of 3 September 2020
Some background of the subject-matter at stake can be found on this Blog here. In brief, Synova asserts EP 1 833 636 B1 » against Avonisys, while Avonisys counter-claims for nullity and seeks a declaration of non-infringement. Further bibliographic information about EP 636 B1 » can be found in the European Register and Swissreg.
Sometimes, the Supreme Court clarifies things once and for all. Sometimes, it doesn’t. The very recent decision 4A_583/2019 of 19 August 2020 (published on 28 August 2020) very likely is an example of the latter.
*** BREAKING ***
Swiss Supreme Court holds that a partial waiver of the patent via the IPI, after formal closure of the file in proceedings at the @PatentCourt, means that infringement proceedings are to be written off as groundless.https://t.co/RGDoQNgIc0 pic.twitter.com/L3f4XmhFBk— Martin WILMING (@FPCreview) August 28, 2020
It became clear at the main hearing that the publication of 4A_583/2019 derailed the proceedings to some extent. From the official announcement of the hearing, we already knew that the plaintiff / patentee had partially waived the patent in suit after receipt of the judge-rapporteur’s expert opinion, i.e. well after the closure of the file (request of 19 June 2020, published 14 August 2020); see the corresponding CH/EP 1 833 636 H1.
The independent claims as amended read as follows (available in German only):
Claim 1
Claim 6
Thus, the complaint has to be dismissed as devoid of purpose, in view of 4A_583/2019, right?
Oh man, if it only was that easy …
The presiding judge had immediately informed the parties by e-mail of the Supreme Court’s judgment 4A_583/2019, and that the FPC tends towards a decision that the complaint is to be dismissed as devoid of purpose — provided that the defendant did not rely on the partial waiver as a novum.
It was bound to happen: This is exactly what the defendant did the very next day.
The main hearing dealt with only this procedural issue in first place. After deliberation, the presiding judge held that the plaintiff‘s submission of the partial waiver was impermissible, in view of 4A_583/2019. But this did not result in the case being devoid of purpose: The defendant‘s submission of the partial waiver was held to be admissible as a proper novum.
Now that the partial waiver is being considered in the proceedings, it will be highly interesting to see how this finally unfolds, i.e. what this means for the complaint (infringement) and the counterclaim (nullity; declaration of non-infringement).
We understood from the pleadings that the judge-rapporteur’s expert opinion was quite favorable for the defendant in that EP 636 B1 » was not infringed.
The parties did not settle; we are eagerly awaiting the judgment!
Reported by Tina VOCI and Martin WILMING
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BIBLIOGRAPHY
Case No. O2018_004 | Hearing of 3 September 2020
Synova AG | |
./. | |
(1) (2) (3) (4) |
Avonisys AG Stephan Mohren Jens Gäbelein Jeroen Hribar |
Panel of Judges:
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- Dr. Andri HESS
- Dr. Tobias BREMI
- Lara DORIGO
Judge-rapporteur:
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- Dr. Tobias BREMI
Court Clerk:
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- Susanne ANDERHALDEN
Representative(s) of Plaintiff:
Representative(s) of Defendants:
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- Dr. Ralph SCHLOSSER (KasserSchlosser)
- Dr. Christoph ENGELBRECHT (Blum), assisting in patent matters
- Dr. Regula RÜEDI (Blum), assisting in patent matters
- Dr. Zacharias STELZER (Blum), assisting in patent matters
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ANNOUNCEMENT
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PATENT IN SUIT
As initially granted:
After the partial waiver:
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BE ON THE KNOW