Litigation on clamping systems: Matter fixed?

Case No. O2012_016 ¦ Main Hearing of 03 December 2014

This case pertains to clamping systems for compacting of metal and ceramic powder. Parties to the proceedings are Erowa AG as the plaintiff and ProGrit GmbH as the defendant.

The allegedly infringing devices of the defendant are abbreviated as RCS (roller clamping system) and SCS (segmented clamping system). Screenshots taken on 06 January 2015 from the defendant’s website are embedded below.

Note that the roller clamping system RCS is not available in Germany and Austria, but rather only a

new version RCS II without heightended surface sections at the chuck.

From the hearing, it became evident that this suit had been lodged already more than 5 years ago; it had thus been transferred to the FPC from a formerly competent cantonal court. Moreover, the parties have been before courts in other jurisdictions on this matter, too (see references below for each of the patents in dispute). Noteworthy, Progrit’s managing partner Dietmar Walter Kramer had been Head R&D at Erowa until 2004 (cf. CV, as found online on December 24, 2014; markup added).

1.  THE PATENTS IN SUIT

i)  The Swiss part of EP 1 068 918 B1

The first patent in suit is the Swiss part of EP 1 068 918 B1. Please see Swissreg for the bibliographic details.

As indicated above, this matter was also litigated elsewhere, e.g. in Germany. Please see DPMAregister for bibliographic details of the German part of the European patent. In Germany, the patent has most recently been upheld in amended form, published as DE 500 08 295 C5; see the decision 4 Ni 43/10 (EP) of the German Federal Patent Court (issued 08 November 2012) and the decision X Zr 148/12 of the German Supreme Court (issued 29 July 2014); and a correction thereof.

The courts in Dusseldorf dealt with the corresponding infringment proceedings; see decision 4a O 270/09 of the Dusseldorf Regional Court (LG) and decision 2 U 29/13 of the Dusseldorf Higher Regional Court (OLG). The decision of the OLG already takes into account the amended wording of the patent as upheld by the Supreme Court with decision X Zr 148/12 (see above).

ii)  The Swiss part of EP 1 068 919 B1

The second patent in suit is the Swiss part of EP 1 068 919 B1. Please see Swissreg for the bibliographic details.

The German counterpart was also litigated in Germany. Please see DPMAregister for bibliographic details. In first instance, the German Federal Patent Court decided to maintain the patent in amended form; see decision 4 Ni 20/11 (EP) of 24 September 2013 (the decision is res judicata).

Again, corresponding infringement proceedings were dealt with by the Dusseldorf courts; see decision 4a O 84/10 of the Dusseldorf Regional Court (LG) and decision 2 U 58/11 of the Dusseldorf Higher Regional Court (OLG).

iii)  CH 699 547 B1

The third patent in suit is CH 699 547 B1; see Swissreg for the bibliographic details.

2.  WHAT THE HEARING WAS ALL ABOUT

The hearing was somewhat exceptional in that the discussion did not concern technical matters at all. Rather, pleadings revolved around highly interesting points of law.

i)  Allowable submissions after closure of the file

last chance
Not always that clear

A first issue relates to the restriction of the request for injunctive relief. It was undisputed that a restriction of the request for injunctive relief constitutes a limitation of the claim which is explicitly permitted at any time; see Art. 227(3) CPC. However, the right of the plaintiff to present new facts in support of such a restricted request was under dispute. Note that the amendment(s) to the requests were made only after the second round of written submissions, i.e. when the closure of the file (“Aktenschluss”) had already occured; see Art. 229(2) CPC and the decision 4A_73/2014 (r. 6.3.2.3) of the Supreme Court. Go figure: Being allowed to limit your request for injunctive relief, but not being allowed to freely argue in support of this limited request? That’s a nasty situation for a plaintiff!

The plaintiff argued that Art. 227(3) CPC should overrule Art. 229 CPC. Otherwise, a limitation of the claim (which is explicitly permitted in Art. 227(3) CPC at any time) would be impossible in patent infringement proceedings. In practice, it is rather unlikely that a patentee would be in a position to argue in support of infringement of a limited request and validity of a limited patent claim (see below) without having to present new facts. You cannot reasonably stockpile for each and every situation that might occur, be it a decision of a foreign court in co-pending proceedings on the same patent family, or new prior art that comes to light.

Moreover, the plaintiff argued that even the requirements of Art. 229 CPC were fulfilled for all patents in suit, essentially as follows:

The decision of the German Federal Supreme Court with respect to the German counterpart of the first patent in suit (see above) constitutes proper nova; see Art. 229(1) lit. a CPC and the decision 5A_568/2012 of the Swiss Federal Supreme Court, r. 4. Moreover, the patentee / plaintiff had partially surrendered the patent vis-à-vis the Patent Office (Art. 24 PatA) to bring the wording of the claim in line with the decision of the German Supreme Court. This would also constitute a new fact and the patentee / plaintiff should be allowed to present new facts in support of validity and infringement of the limited claim (like in the corresponding proceedings in Germany, see above). Note, however, that the limitation had not yet been published at the date of the hearing, and the FPC apparently dismissed a request of the patentee to postpone the hearing until publication of the limitation.

With respect to the second and the third patent in suit, the plaintiff argued that the preliminary assessment of the reporting judge and the decision 4 Ni 20/11 (EP) of the German Federal Patent Court constitute nova according to Art. 229(1) CPC, and that it should likewise be allowed to present new facts in support of validity and infringement of correspondingly limited claims that address these newly raised issues.

In sum, this boils down to three scenarios of limitations to a patent claim / request for injunctive relief: Is it allowed to present new facts in support of a limited claim / request, when the limitation is occasioned by: –

  1. … a corresponding decision in another country?
  2. … a statement in the preliminary assessment of the reporting judge?
  3. … a partial surrender of the patent?

ii)  Limitation under Art. 24 lit. c / partial invalidity

The patentee / plaintiff asserted that the patents in suit are valid and infringed on the basis of independent patent claims that were to be limited by incorporation of features taken from the description (i.e., not a combination of an independent claim with a dependent claim).

In the present proceedings, the defendant did not lodge a counterclaim for nullity but rather argued for nullity as a mere plea in defense. Apparently, the FPC had indicated to the parties in writing beforehand that it is doubtful whether it is possible at all to limit a claim on the basis of a feature taken from the description vis-à-vis the FPC, or if this shall only be possible when a counterclaim for nullity had been lodged (see Art. 27 PatA). E. Brunner in Der Patentverletzungsprozess (SMI 1994, p 127) favours the latter. Even though the plaintiff / patentee fiercely rebutted this view, the prior information from the FPC had prompted the plaintiff / patentee to declare the partial surrender of the patents vis-à-vis the patent office before the hearing. The partial surrender had not yet been officially published when the hearing took place, but had already been approved by the patent office.

A decision of the FPC on these highly interesting points of law would definitely make a good read. However, the parties finally entered into settlement negotiations and it remains to be seen if a decision will be issued at all.

Reported by Susanna RUDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2012_016 ¦ Main Hearing of 03 December 2014

Erowa AG ./. ProGrit GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President; Judge)
  • Dr. Tobias BREMI (Judge)
  • Dr. Kurt SUTTER (Reporting Judge)
  • Esther SCHEITLIN (Court Clerk)

Representative(s) of Plaintiff:

  • Dr. Thierry CALAME (Lenz & Staehelin)
  • René RUF (Rottmann, Zimmermann + Partner), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Mark SCHWEIZER (MLL)
  • Dr. Reinhard OERTLI (MLL)
  • Willi LUCHS (Luchs & Partner), assisting in patent matters

Criteria for national limitation in Switzerland and under the EPC

Case No. O2012_030 ¦ Decision of 17 September 2013 ¦ “Teilnichtigkeitsklage; Teilverzicht und Beschränkungsverfahren; Disclaimer”

1.  Background of the case

The main hearing in this matter took place on September 17, 2013; see the detailed report in an earlier post.

The patent-in-suit in this nullity case is EP 1 508 436. Initially, the patent was granted as EP 1 508 436 B1 by the EPO without any material objections during prosecution. The search report cited documents JP 8 311417 AWO 02/00802 AEP 1 279 695 AWO 99/48618 A and DE 200 22 503 U as belonging to the technological background (“A”) only. See the EPO file wrapper (6.2 Mb) and the European Patent Register for further details of the prosecution history.

Later-on, the patent-in-suit was subject to centralized limitation proceedings at the EPO in accordance with Art. 105a EPC and was re-published as EP 1 508 436 B3.

The only indenpendent claim 1 of EP 1 508 436 B3 reads as follows :

Self-adhesive tape for closing, sealing and adhering joints, more especially for use in house-building, and more especially joints in corners and edges, said tape having a carrier layer (1) on its upper side, an adhesive coating (2) of the carrier layer (1) on its underside and a removable covering film (3) on its underside, characterised in that at least a first fold portion (4) of the tape is folded-over in the transverse direction along a first folding edge (5) extending in the longitudinal direction of the tape, and in that at least one part of the adhesive coating (2) along a longitudinal portion of the tape is not covered with the covering film (3).

Embodiments of such a tape are illustrated inter alia as follows in the patent in suit (annotation added; click image to enlarge). The portions (4) and (6) can be folded outwards, i.e. upper and lower parts of the carrier layer (1) are not adhesively connected:

Patent in suit, Fig. 2 and 3 (annotated)

Patentee / defendant left the independent claim untouched in centralized limitation proceedings with the EPO. Rather, only dependent claim 16 and a corresponding part of the description was deleted; cf. EP 1 508 436 B1 with tracked changes. This deleted dependent claim related to embodiments wherein the adhesive coating (2) has a non-adhesive central strip.

Patentee / defendant argued that the person of routine skill in the art would understand claim 1 now such that the adhesive coating is devoid of a non-adhesive central strip, in order to distinguish the claimed invention from the prior art, namely document D3 (JP 8 311417 A) already cited in the search report. See Fig. 2 of D3 below (annotations added; click to enlarge):

D3, Fig. 2 (annotated)

In auxiliary requests, the absence of a non-adhesive central strip was even literally recited in claim 1; see below.

2.  Requests

Patentee / defendant requested maintenance of the patent as follows.

Main Request

Claim 1 of EP 1 508 436 B3, but further limited by the intended purpose for use in house building and the feature that the tape is rolled-up to form a roll of adhesive tape (click to enlarge):

Main Request

1st Auxiliary Request (AR1)

Similar to (1.), but reformulated as a use claim (click to enlarge):

1st Auxiliary Request

2nd Auxiliary Request (AR2)

Similar to MR, but with a further negative feature (let’s call it a disclaimer) clarifying that the adhesive coating (2) has no non-adhesive central strip (click to enlarge):

2nd Auxiliary Request

3rd Auxiliary Request (AR3)

Similar to AR1, but again with the disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip (click to enlarge):

3rd Auxiliary Request

3.  The decision of the FPC

Legal interest in the nullity action

The defendant had been served with a warning letter by the plaintiff. However, the warning letter was based on EP 1 508 648 B1, i.e. not the patent-in-suit here. The patentee thus put the legal interest of the defendant in dispute. The FPC clearly held that the — undisputed — competitive relationship between the parties is sufficient to establish a legal interest; see BGE 116 II 196, r. 2.

Differences between CH-PatA and EPC re limitation

This case highlights a potential pitfall in the interplay of centralised EPO limitation and yet further national limitation of the European patent in Switzerland.

In brief, this is how the FPC correlated the provisions of the PatA and the EPC:

According to the PatA, …
… a limited claim must refer to the same invention
(Art. 24(1) lit. c PatA)
Limitation and the same invention implies reduced scope (i.e. no shifted scope), essentially corresponding to the prohibition of Art. 123(3) EPC, i.e. that the patent may not be amended in such a way as to extend the protection it confers.
… define an embodiment that is included in the version of the patent application that determined the date of filing
(Art. 24(1) lit. c PatA)
Essentially corresponding to Art. 123(2) EPC, i.e. that the patent may not be amended in such a way that it contains subject‑matter which extends beyond the content of the application as filed
… define an embodiment that is included in the specification of the published patent
(Art. 24(1) lit. c PatA)
no corresponding provision in the EPC

Beyond the requirements under the EPC, limitation in Switzerland thus requires that the limited claim defines an embodiment that is included in the specification of the published patent. In particular, the FPC referred to BGE 95 II 364 (r. 4f) in this respect. This additional requirement under the PatA was decisive for AR2 and AR3, see below.

MR and AR1

Patentee argued that the person of routine skill in the art would understand the (limited) patent in a sense that the adhesive layer uninterruptedly covers the underside of the tape. The FPC was not convinced. In fact, there are even embodiments in the patent in suit that are perforated through the adhesive layer (see figures above). Thus, D3 was held to be novelty-destroying for both MR and AR1.

AR2 and AR3

As outlined above, the disclaimer in these requests pertains to an embodiment that initially was positively defined as an embodiment according to the invention. Such “disclosed” disclaimers were dealt with in G2/10 of the Enlarged Board of Appeal of the EPO. However, after EPO limitation the (formerly positively disclosed) embodiments were not part of the patent anymore. The criteria of G2/10 were thus no longer applicable here. Rather, the criteria set forth in decisions G1/03 and G2/03  of the Enlarged Board of Appeal of the EPO were to be applied. Since D3 is not “accidentially” novelty destroying but rather pertains to the very same technological field the criteria set forth in G1/03 and G2/03 were not fulfilled, either. The disclaimer in both AR2 and AR3 was thus held inadmissible.

4.  Personal remarks on “limitation of the patent”

Beyond the peculiarities of Swiss limitation requirements discussed above, yet another aspect of the present case is somewhat noteworthy (even though not decisive here): Was the patent indeed “limited by an amendment of the claims” in centralised EPO limitation proceedings, as Art. 105a(1) EPC requires?

As outlined above, independent claim 1 was not amended at all; only a dependent claim (i.e. the optional presence of an additional feature) and the corresponding part of the description was deleted. Can this result in a limitation of the scope of the patent? Generally speaking, I would say “no”. I did not conduct an in-depth literature and case law review, but evidently there is some support for this point of view, e.g.:

According to the EPO, a limitation must reduce the scope of protection of an independent claim by adding a feature. Dependent claims, description and drawings may only be amended in accordance with amendments of the independent claims.
(D. Visser, The annotated European patent convention, Nov. 2012, #1 to R. 95(2) EPC)

Eine Beschränkung setzt dabei stets voraus, dass zumindest in einen unabhängigen Anspruch eine Beschränkung aufgenommen worden ist. Nicht ausreichend ist es hingegen, dass lediglich ein abhängiger Anspruch  […] beschränkt worden ist, da damit der Schutzbereich der geänderten Ansprüche insgesamt nicht beschränkt wird.
(Fitzner · Lutz · Bodewig, Patentrechtskommentar, 2012, #17 to Art. 105 EPC)

This being said, I was quite surprised to see what the EPO Guidelines for Examination (D-X 4.3) say:

More particularly, the limitation of a dependent claim only, without any independent claim being limited, is acceptable.

Thus, limitation in the present case was apparently in conformance with the Guidelines. But, again: Can this be a limitation?

Giving this a second thought, there may well be situations where deletion of a dependent claim reduces the scope of the patent. Assume a patent with the following claims:

  1. Screw, made from steel.
  2. Screw according to claim 1, made from stainless steel.
  3. Screw according to claim 1, made from iron only.
  4. Screw according to claim 1, without any thread.

The description contains the following paragraphs:

[0001] As understood herein, the term “steel” also encompasses the raw materials used in the manufacture of steel, such as e.g. iron.

[0002] As understood herein, the term “screw” encompasses also nails (considered herein as screws without threads).

Evidently, claims 3 and 4 and the corresponding definitions given in para. [0001] and [0002] are contrary to the common understanding of a person of skill in the art of the terms “steel” and “screw”. And, of course, an application like this should not pass examination without an objection under Art. 84 EPC; see EPO Guidelines for Examination (F-IV 4.2). But once the patent is granted as such, definitions stand as they are. That means that — by unconventional definition — the scope of the claim is broader than the mere wording of claim 1 would suggest at first sight. If such an unconventional definition is deleted later on in limitation proceedings (in the claims and the description), it is again the common understanding of the person of skill in the art that counts (thus, steel is not iron anymore, and a nail is no longer a screw). I can only think of situations like these where deletion of a dependent claim reduces the scope of the patent. But in a perfect world, such claim sets should not be granted but rather be objected under Art. 84 EPC. Assuming that the Guidelines are not referring to cases that should not even have passed to grant if the examiner had acted in accordance with the Guidelines during prosecution, I am puzzled about the rationale behind this instruction to the examiners. In my perception this is plain wrong.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_030 ¦ Decision of 17 September 2013 ¦ “Teilnichtigkeitsklage; Teilverzicht und Beschränkungsverfahren; Disclaimer”

Targo Specialty Products AG ./. Silu Verwaltung AG

Subject(s):

  • Nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Reporting judge)
  • Dr. Christoph WILLI (Judge)
  • André WERNER (Judge)
  • Dr. Markus A. MÜLLER (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Thierry CALAME (Lenz & Stähelin)
  • Marco ZARDI (Zardi), assisting in patent matters
  • Udo ALTENBURG (Bardehle, of counsel), assisting in patent matters

Full text of the decision right here:

Download (PDF, 274KB)

The very first main hearing at a glance

Case No. O2012_030 ¦ Main Hearing of 17 September 2013

I have attended the main hearing in this matter today. Why, you ask? Well, this was the very first main hearing before the FPC at all. All theory is grey: Like many practitioners, I was eager to learn how this is handled by the FPC in practice. Now, how did it go?

1.  Procedural matters

The President introduced the parties (cf. Bibliography below). The patent-in-suit was not explicitly identified. However, from the subsequent discussion of the subject-matter at stake, one could easily figure this out. Expectedly, the President reminded the parties that the Board expects them to only present new facts and new evidence that indeed are (proper or improper) novae according to Art. 229 (1) CPC. No pleading was expected.

The parties made their opening submissions (Art. 228 CPC), incl. reply and rejoinder. It was clarified that no taking of evidence according to Art. 231 CPC was envisaged by the Board (even though the defendant stressed some of his offers of evidence again). Moreover, the parties informed the Board of their costs for legal representation and for their patent attorneys in an advisory capacity.

Next, the President reminded the parties of their mandatory right to be heard in a humorous way (cf. an earlier post in this respect, with further reference):

Nun also das Ping-Pong bis zur Bewusstlosigkeit: […]

However, the plaintiff chose to not even start that game.

The President then asked the parties whether they are interested to settle the case with a consent judgement. The Board would then come up with a proposal. The proceedings were interrupted for the parties to discuss internally. No audience was allowed subsequently. It remains to be seen whether the parties agree in a consent judgement or whether we will see a published decision.

2.  Subject-matter at stake

The patent-in-suit in this nullity case is EP 1 508 436. Within the group of companies of the patentee / defendant, a product according to the patent-in-suit is marketed under the tradename Corvum.

Initially, the patent was granted as EP 1 508 436 B1 by the EPO without any material objections during prosecution. The search report only classified documents D1D2D3D4 and D5 as belonging to the technological background (“A”). See the EPO file wrapper (6.2 Mb) and the European Patent Register for further details of the prosecution history.

Later-on, the patent-in-suit was subject to centralized limitation proceedings at the EPO in accordance with Art. 105a EPC and was re-published as EP 1 508 436 B3.

The only indenpendent claim 1 of EP 1 508 436 B3 reads as follows :

Self-adhesive tape for closing, sealing and adhering joints, more especially for use in house-building, and more especially joints in corners and edges, said tape having a carrier layer (1) on its upper side, an adhesive coating (2) of the carrier layer (1) on its underside and a removable covering film (3) on its underside, characterised in that at least a first fold portion (4) of the tape is folded-over in the transverse direction along a first folding edge (5) extending in the longitudinal direction of the tape, and in that at least one part of the adhesive coating (2) along a longitudinal portion of the tape is not covered with the covering film (3).

Patentee / defendant left this independent claim untouched in centralized limitation proceedings with the EPO. Rather, only dependent claim 16 and a corresponding part of the description was deleted; cf. EP 1 508 436 B1 with tracked changes. This deleted dependent claim related to embodiments wherein the adhesive coating (2) has a non-adhesive central strip. Patentee / defendant argued that the person of routine skill in the art would understand claim 1 now such that the adhesive coating is devoid of a non-adhesive central strip, in order to distinguish the claimed invention from the prior art.

From the oral submissions, I assume that the patentee / defendant requests maintenance of the patent roughly as follows:

  1. Claim 1 of EP 1 508 436 B3, but further limited by the intended purpose for use in house building and the feature that the tape is rolled-up to form a roll of adhesive tape.
  2. Eventualiter:
    Similar to (1.), but reformulated as a use claim.
  3. Subeventualiter:
    Similar to (1.), but with a further disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip.
  4. Subsubeventualiter:
    Similar to (2.), but with a further disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip.

It is my understanding that the patentee / defendant had presented the additional disclaimer in order to overcome issues raised in the assessment of the reporting judge. The parties expressed different views on allowability of the disclaimer, in view of the decisions G1/03, G2/03 and G2/10 of the Enlarged Board of Appeal of the EPO.

There are quite some interesting legal questions involved in this interplay of centralized EPO limitation and allowability of the additional disclaimer. I am looking forward to discuss these in more detail on the basis of the decision being published (if any).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_030 ¦ Main Hearing of 17 September 2013

Targo Specialty Products AG ./. Silu Verwaltung AG

Subject(s):

  • Nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Reporting judge)
  • Dr. Christoph WILLI (Judge)
  • André WERNER (Judge)
  • Dr. Markus A. MÜLLER (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Thierry CALAME (Lenz & Stähelin)
  • Marco ZARDI (Zardi), assisting in patent matters
  • Udo ALTENBURG (Bardehle, of counsel), assisting in patent matters